In intellectual property (IP) infringement actions, the civil / criminal actions have their own procedures to follow. Actions can be with or without an application for search and seizure. In cases where a Plaintiff prays for appointment of a Court appointed Commissioner (LC) to visit the promises of Defendant and prepare inventory of infringing goods, generally the search should be conducted at the earliest to recover maximum possible goods. Any delay in the action might cause the infringing goods to disappear / flooded in the market, out of the control and possession of the Defendant and making the search and seizure action futile.
Enforcement actions to protect IP infringement are most important aspect of protecting the brand and keeping the pirates in control.
Briefly, the steps to be undertaken are the following steps: –
1. Investigating targets for locating and evaluating pirates and their activity;
2. Advising clients upon the investigation report;
3. Obtaining search & seizure order from the Judge;
4. Assisting the LC and police to conduct the search & seizure; and
5. Assisting the LC and Police for timely filing of the report and inventory in Court.
After the report of LC / police comes on record, the next step is that the Judge evaluates the inventory of infringing / counterfeiting products. Defendant, thereafter, has to prove that the seized goods are not counterfeit / infringing. Failing to do so, Defendant is always well advised to settle with the Plaintiff / Complainant after paying token damages and suffering injunction.
A well executed search and seizure action can save Plaintiff a lot of time and energy as the inventory of infringing goods proves the factum of counterfeiting. The sole issue to decide, generally, is of the damages which the Defendant agrees to pay to the Plaintiff to settle the matter.
A poorly executed search and seizure can not only cause a lot of monetary loss to the Plaintiff but also cause irreparable embarrassment before the Judge in a given case.
The Author has, so far, conducted several such actions as LC or as attorney for the Plaintiff assisting the LC. At many places the operation was smooth. At most places the operation has been forgettable because the Defendant, or his employees, acted smart and tried to obstruct the proceedings.
Execution of such actions, also called, though wrongly, ‘raid’ by many, requires considerable preparation. Though only after landing at a site can one truly evaluate the situation, rule of thumb is to execute the commission, collect all evidence at the earliest and leave the premises.
All the best.