IP Enforcement by the Police
Key Legal Provisions and Procedures:
- Intellectual Property Laws in Force:
- Intellectual Property Organization of Pakistan Act, 2012
- Patents Ordinance, 2000 (amended in 2002 and 2006)
- Trade Marks Ordinance, 2001
- Copyright Ordinance, 1962 (amended in 2000)
- Registered Designs Ordinance, 2000
- Registered Layout-Designs of Integrated Circuits Ordinance, 2000
- Relevant sections of the Pakistan Penal Code, 1860 (Sections 478-489)
- Complaint and FIR Registration:
- Action is initiated based on a written complaint from the complainant.
- The FIR must be registered under the relevant sections (66/67) of the Copyright Ordinance, 1962.
- Preliminary requirements before FIR registration include proof of copyright ownership, relation with the copyright owner if the complainant is not the owner, proof of economic loss, and detailed information about the alleged violator and the complaint specifics.
- Investigation and Legal Processes:
- An inquiry is conducted post-FIR registration. If allegations are substantiated, the accused is arrested and interrogated.
- The investigation must be completed and a challan submitted within the mandatory period as prescribed under Section 173 of the Code of Criminal Procedure, 1898 (CrPC).
- Original records are to be made part of the judicial file, and the recovery/seizure memo must be signed by the Investigation Officer and at least two prosecution witnesses.
- The case is filed in the relevant Intellectual Property Tribunal.
- Jurisdiction and Powers of Tribunals:
- The IPO Act, 2012 grants the organization powers to initiate and monitor IPR enforcement through designated law enforcement agencies and to conduct inquiries, investigations, and proceedings related to offences.
- All suits and civil proceedings regarding IPR infringement are to be instituted and tried in the designated Tribunals, which have exclusive jurisdiction to try any offence under intellectual property laws.
- Relevant Provisions from the Pakistan Penal Code:
- Sections 478-489 of the Pakistan Penal Code deal with offences related to false trademarks, property marks, counterfeiting, and selling goods marked with counterfeit marks, specifying punishments ranging from fines to imprisonment.
- Police Duties and Powers:
- According to the Police Order, 2002, police officers are tasked with protecting life, property, and liberty of citizens, preventing offences and public nuisances, and applying for legal processes such as summons or warrants against suspected offenders.
Checklist for IPR Enforcement Actions by Police in IPR Infringement Matters
Introduction
Intellectual Property Rights (IPR) play a crucial role in protecting the creations of human intellect, which include patents, trademarks, copyrights, and industrial designs, among others. In Pakistan, IPRs are safeguarded under various laws, and their enforcement often involves the police. This article outlines the essential checklist for IPR enforcement actions by the police, ensuring a clear understanding of the procedural steps and legal requirements involved in addressing IPR infringement matters.
1. Filing a Complaint
The enforcement process begins with the filing of a written complaint by the complainant. The complaint must contain specific allegations against the alleged violator of copyright. This is the foundational step that triggers the involvement of the police in the IPR enforcement process.
2. Preliminary Verification
Before registering a First Information Report (FIR), the FIR registering officer must ensure the following:
- Written Complaint: A detailed written complaint against the alleged violator.
- Proof of Ownership: Proof of copyright ownership, such as a copyright registration certificate or any other valid evidence.
- Relationship Proof: If the complainant is not the right owner, proof of their relationship with the copyright owner.
- Economic Loss: Documentation of any economic loss suffered due to the infringement.
- Complainant Details: Comprehensive details of the complainant, including address, contact numbers, and CNIC.
- Alleged Violator Information: Name and address of the alleged copyright violator.
- Physical Assets Description: Detailed description of the physical assets involved.
- Specific Allegations: The written complaint must be specific about the allegations.
3. Registration of FIR
Once the preliminary verification is completed and all required details are obtained, the FIR is registered under the relevant sections (66/67) of the Copyright Ordinance, 1962 (as amended in 2000). This formalizes the initiation of legal proceedings against the alleged infringer.
4. Conducting an Inquiry
Following the registration of the FIR, an inquiry is conducted to investigate the allegations. Key steps in this process include:
- Immediate Arrest: If the inquiry substantiates the allegations, the accused is arrested immediately.
- Interrogation: The accused is interrogated with reference to the charge sheet.
- Completion of Investigation: The investigation must be finalized according to the legal provisions of the Code of Criminal Procedure (CrPC) for the submission of a challan within the mandatory period as prescribed under Section 173 of the CrPC.
5. Documentation and Evidence Handling
Proper documentation and evidence handling are critical. The following steps must be adhered to:
- Judicial File Preparation: The original record must be made part of the judicial file for prosecution. If the original record is unavailable, attested photocopies by the custodian of the record are used.
- Recovery/Seizure Memo: The recovery/seizure memo must be signed by the Investigation Officer and at least two prosecution witnesses (PWs).
- Witness Statements: Statements from witnesses and other relevant parties must be collected and documented meticulously.
6. Filing the Case in IP Tribunal
After completing the investigation and compiling all necessary documentation, the case is filed in the relevant Intellectual Property Tribunal. The Tribunal is responsible for adjudicating the matter, ensuring that justice is served in accordance with the law.
7. Court Proceedings and Conviction
The judicial process involves court proceedings where evidence is presented, and witnesses are examined. The court evaluates the case and, if the allegations are proven, convicts the accused accordingly. The penalties may include fines, imprisonment, or both, as stipulated under the relevant IPR laws and the Pakistan Penal Code.
Key Legal Provisions
IPO Act, 2012
Section 13: Powers and Functions of the Organization
- Enforcement and Protection: The Intellectual Property Organization of Pakistan (IPO-Pakistan) is empowered to initiate and monitor the enforcement and protection of intellectual property rights (IPRs) through designated law enforcement agencies at both federal and provincial levels. It is also responsible for collecting related data and information.
- Inquiries and Investigations: The IPO can initiate and conduct inquiries, investigations, and proceedings related to IPR offences in the prescribed manner.
- Referrals to Law Enforcement: The IPO has the authority to refer matters and complaints related to IPR offences to the concerned law enforcement agencies and authorities necessary for the purposes of this Act.
Section 15: Trial of Offences
- Exclusive Jurisdiction: The accused shall be tried and prosecuted for IPR offences in the designated Tribunal. The cases are to be heard daily and disposed of within ninety days, ensuring expedited judicial proceedings.
Section 17: Powers of the Tribunals
- Civil and Criminal Jurisdiction: The Tribunal has all the powers vested in a civil court under the Code of Civil Procedure, 1908, and in criminal cases, it has the same powers as a Court of Sessions under the Code of Criminal Procedure, 1898.
- Judicial Proceedings: All proceedings before the Tribunal are considered judicial proceedings within the meaning of sections 193 and 228 of the Pakistan Penal Code.
- Exclusive Jurisdiction: No court other than a Tribunal shall have jurisdiction over matters falling within the Tribunal’s purview, except for proceedings already pending before other courts prior to the Act’s enforcement.
Section 18: Jurisdiction of the Tribunals
- Civil Proceedings: All suits and other civil proceedings regarding IPR infringement must be instituted and tried in the Tribunal.
- Offences: The Tribunal has exclusive jurisdiction to try any offence under intellectual property laws, notwithstanding any other law in force.
Section 19: Appeals
- Appeals to High Court: Any person aggrieved by the final judgment or order of the Tribunal may, within thirty days, appeal to the High Court with territorial jurisdiction over the Tribunal.
Section 39: Act to Override Other Laws
- Supremacy of the Act: The provisions of the IPO Act, 2012, override any inconsistent provisions in other laws currently in force, ensuring the primacy of this Act in matters of intellectual property rights enforcement.
Copyright Law Provisions (Copyright Ordinance, 1962 (Amended in 2000))
- Section 65A: Prohibition: No infringing copies of any work shall be allowed to be imported into or exported out of Pakistan by any means.
- Section 65B: Customs Officers’ Jurisdiction: Customs officers can detain any consignment suspected of containing infringing copies upon an application by the copyright owner. The consignment, if found infringing, will be confiscated, and penalties will be applied as per the Customs Act, 1969.
- Section 65C: Release of Detained Consignment: If the examination process is not completed within fifteen days, the importer/exporter can apply for the release of goods by furnishing appropriate security.
Relevant Provisions of Police Order, 2002
- Duties of Police (Section 4):
- Protect life, property, and liberty of citizens.
- Preserve public peace.
- Ensure the rights and privileges of a person taken into custody are protected.
- Prevent the commission of offences and public nuisances.
- Lay information before a competent court and apply for necessary legal processes against suspected offenders.
Relevant Provisions of Pakistan Penal Code, 1860
- Section 478: Trade Mark: Defines a trademark for the purposes of the Penal Code.
- Section 479: Property Mark: Defines a property mark.
- Section 480: Using a False Trade Mark: Prohibits the use of a false trademark to mislead about the goods’ origin or ownership.
- Section 481: Using a False Property Mark: Prohibits the use of a false property mark.
- Section 482: Punishment for Using a False Trade Mark or Property Mark: Imprisonment up to one year, fine, or both.
- Section 483: Counterfeiting a Trademark or Property Mark: Imprisonment up to two years, fine, or both.
- Section 484: Counterfeiting a Mark Used by a Public Servant: Imprisonment up to three years, fine, or both.
- Section 485: Making or Possession of Instruments for Counterfeiting: Imprisonment up to three years, fine, or both for making or possessing tools for counterfeiting trademarks or property marks.
- Section 486: Selling Goods with Counterfeit Trade Mark or Property Mark: Imprisonment up to one year, fine, or both, unless acting without intent to defraud.
- Section 487: Making a False Mark on Receptacles Containing Goods: Imprisonment up to three years, fine, or both.
- Section 488: Punishment for Using False Marks: Imprisonment up to three years, fine, or both, unless acting without intent to defraud.
- Section 489: Tampering with Property Mark with Intent to Cause Injury: Imprisonment up to one year, fine, or both.
Section 173 of Code of Criminal Procedure, 1898
- Completion of Investigation: Every investigation must be completed without unnecessary delay.
- Forwarding Report to Magistrate: Upon completion, a report must be forwarded to a Magistrate empowered to take cognizance of the offence, including names of parties, nature of information, and witness details.
- Interim Report: If the investigation is not completed within fourteen days, an interim report must be submitted, and the trial can commence based on this report unless decided otherwise by the court.
- Provision of Report to Accused: A copy of the report must be furnished to the accused before the inquiry or trial begins, with costs unless the Magistrate decides otherwise.
IP Enforcement by the Customs
The enforcement of Intellectual Property Rights (IPR) by Pakistan Customs is a systematic process governed by various legislative provisions and guidelines. The primary legal framework includes the Customs Act, 1969, and the Customs Rules, 2001, which outline specific duties and procedures for customs officers regarding IPR enforcement. Here is a detailed overview of the process:
- Legal Framework:
- The Customs Act, 1969, Sections 15, 16, and 17, provides the basis for prohibiting the import and export of infringing goods and the detention, seizure, and confiscation of such goods.
- Chapter XXVII of the Customs Rules, 2001, specifically rules 678 to 686, as amended by SRO No. 170(I)/2017, detail the procedural aspects of IPR enforcement.
- Complaint Procedure:
- The process begins with a complaint by the rights holder. The complaint must be in writing and supported by necessary documents, including the IPR registration certificate, CNIC, NTN, indemnity bond, bank guarantee, power of attorney (if applicable), and evidence such as samples or photographs.
- The complaint is submitted on a prescribed form (Annex-A of the Customs Rules).
- Verification and Detention:
- Upon receiving the complaint, the Director IPR (Enforcement) verifies the particulars against the Trademark and Copyright Databases maintained by IPO-Pakistan.
- If the verification is satisfactory, the Director orders the detention of the suspected infringing goods and notifies both the complainant and the owner of the goods.
- Examination and Seizure:
- The detained goods are then jointly examined by customs officers and officers from the Directorate General of IPR (Enforcement) in the presence of both parties.
- If it is determined that the goods infringe the complainant’s IPR, the goods are seized, and the case is forwarded to the relevant Customs Collectorate for adjudication under Sections 156 and 157 of the Customs Act.
- Forfeiture and Disposal:
- The owner of the infringing goods has the option to consent to the forfeiture of the goods at any time before seizure. If consent is given, the goods are forfeited in favour of the Federal Government.
- If no consent is given, and the goods are seized, the Director IPR (Enforcement) forwards the case for legal proceedings.
- Ex-Officio Actions:
- Customs officers may also take ex-officio actions if they have reasonable grounds to believe that infringing goods are present at a customs station. Such actions require prior approval from the concerned Additional Collector and follow similar procedures for detention, verification, and seizure.
- Appeal and Release:
- In cases where a consignment is detained but not confirmed as infringing, the importer or exporter can apply for the release of the goods by furnishing an appropriate security.
- Orders of detention or seizure by customs officers are appealable as per the provisions of the Customs Act.
- Contact Points:
- IPO-Pakistan and various regional offices serve as contact points for IPR enforcement and assistance.
In the event of intellectual property (IP) infringement, there is a comprehensive checklist that customs officers must follow:
- Complaint Submission:
- Written Complaint: Ensure that the complainant has submitted a written complaint on valid grounds that the imported goods are infringing on their IP rights under the relevant laws (Copyright Ordinance, 1962, or Trademark Ordinance, 2001).
- Prescribed Form: The application must be submitted on the prescribed form (Annex-A of the Customs Rules, 2001 Chapter XXVII).
- Required Documents:
- IPR Registration Certificate: Verify that the complainant has provided the IPR registration certificate from IPO-Pakistan or a certified copy of the applied IPR.
- Copy of CNIC: Ensure the submission of a copy of the complainant’s Computerized National Identity Card (CNIC).
- Copy of NTN: Check for the submission of the complainant’s National Tax Number (NTN).
- Indemnity Bond: Ensure that an indemnity bond to indemnify customs authorities against all liabilities is submitted (Annex-B of the Customs Rules, 2001 Chapter XXVII).
- Bank Guarantee: Confirm the provision of a bank guarantee of Rs. 500,000 or 25% of the value of the suspected infringing goods (Annex-C of the Customs Rules, 2001 Chapter XXVII).
- Power of Attorney: Verify if a certified copy of the power of attorney is submitted, in case of an authorized representative.
- Evidence: Ensure the submission of samples, photos, or media (if available) and a statement of the grounds for detention of counterfeit or pirated goods with prima facie evidence.
- Document Verification:
- Consult Databases: The Director IPR (Enforcement) must consult the Trademark and Copyright Databases maintained by IPO-Pakistan to verify the particulars of the right holder.
- Detention of Infringing Goods:
- Order Detention: If the records are verified, the Director IPR (Enforcement) will order the detention of the infringing goods.
- Notify Parties: Notify the complainant and the owner of the goods in writing, asking them to join the proceedings.
- Joint Examination:
- Presence of Parties: Ensure that the detained goods are examined jointly by an officer of Customs and an officer of the Directorate General of IPR (Enforcement) in the presence of both parties.
- Seizure of Goods:
- Determine Infringement: If it is determined that the detained goods infringe the complainant’s IP rights, seize the goods.
- Forward Case: Forward the case to the concerned Customs Collectorate for adjudication under Sections 156 and 157 of the Customs Act, 1969.
- Option of Forfeiture:
- Consent for Forfeiture: The owner of the infringing goods has the option to voluntarily consent in writing for the goods to be forfeited in favour of the Federal Government before seizure. If consent is received, order the forfeiture of the infringing goods.
- Ex-Officio Actions:
- Reasonable Grounds: If a customs officer has reasonable grounds to believe that infringing goods have arrived at a customs station, they must inform the concerned Directorate of IPR (Enforcement) in writing with the prior approval of the concerned Additional Collector.
- Follow Procedures: Follow the same procedures as mentioned under points 3 to 7 above.
Summary of Legal Provisions in Annexures of IPR Enforcement Manual
Annex-I: Relevant Provisions of Customs Act, 1969
- Section 4: Powers and Duties of Customs Officers:
- Customs officers exercise powers and discharge duties conferred by the Act and are competent to exercise powers conferred on subordinate officers, subject to limitations by the Board.
- Section 15: Prohibitions on Import and Export:
- Prohibits the import/export of counterfeit coins, currency, obscene materials, and goods with counterfeit trademarks or false trade descriptions.
- Section 16: Power to Prohibit or Restrict Goods:
- Allows the Federal Government to prohibit or restrict the import/export of specific goods by notification in the official Gazette.
- Section 17: Detention, Seizure, and Confiscation:
- Empowers customs officers to detain, seize, and confiscate goods imported or attempted to be exported in violation of Sections 15 or 16, subject to approval by an officer not below the rank of Assistant Collector .
Annex-II: Copyright Law Provisions (Copyright Ordinance, 1962, Amended in 2000)
- Section 65A: Prohibition on Infringing Copies:
- Prohibits the import/export of infringing copies of any work in any form.
- Section 65B: Jurisdiction of Customs Officers:
- Allows customs officers to detain consignments suspected of containing infringing copies upon application by the copyright owner. The examination of such consignments must be done in the presence of parties, and infringing copies are ordered to be confiscated.
- Section 65C: Release of Detained Consignment:
- Provides for the release of detained consignments if the importer/exporter furnishes appropriate security and the requirements of Section 65B are not completed .
Annex-III: Relevant Provisions of Trademark Ordinance, 2001
- Section 53: Prohibition of Infringing Goods:
- Allows the proprietor of a registered trademark to notify the Collector of Customs that certain goods expected to arrive are infringing and request that they be treated as prohibited goods.
- Section 54: Notice for Intervention by Customs Authorities:
- Requires the notice to be accompanied by an undertaking to indemnify customs authorities and compensate importers for wrongful suspension of clearance.
- Section 55: Security or Equivalent Assurance:
- Allows the Collector of Customs to require a security or assurance to protect the importer/consignee/owner of the goods.
- Section 56: Seizure of Goods Bearing Infringing Trademark:
- Empowers the Collector of Customs to seize goods bearing an infringing trademark.
- Sections 57-59: Procedures for Seizure and Release:
- Detail the procedures for notifying parties, seizing goods, and releasing goods if no action for infringement is brought within a specified period .
Annex-IV: Enforcement of Intellectual Property Rights, Customs Rules, 2001 (Chapter XXVIII)
- Rules 678-686: Procedural Aspects:
- Outline the procedures for IPR enforcement by customs officers, including the receipt and verification of complaints, detention and examination of goods, and seizure and adjudication processes.
- Specify the option for owners of infringing goods to consent to forfeiture and provide guidelines for ex-officio actions by customs officers .
These provisions collectively establish a comprehensive legal framework for the enforcement of intellectual property rights by Pakistan Customs, ensuring that infringing goods are effectively identified, detained, and dealt with in accordance with the law.
