The whole world is facing a lot of problem during Corona Epidemic. Physical business dealing has been remarkably been paralysed because of this epidemic. But result is rapid increase in digital marketing, digital trade and so it cyber counterfeiting. How to deal with online counter feinting, is a big issue in Corona Time.

Here are few of the option , which are available to a right holder. If some cyber counterfeiting through a web site is noticed then a right holder may send a Cease and Desist letter/legal notice to the website as also to the sellers operating on the website under Sections 79(1) and (2) of the Information Technology Act, 2000, read with Rule 3(d) of the Information Technology (Intermediary Guidelines) Rules, 2011 and under the Trademarks Act, 1999 and Copyrights Act, 1957.

If no reply is received within 3 weeks and the infringing contents are still appearing on the website, take further actions for instituting a civil suit for injunction, damages and rendition of accounts in the Court. Once the ad-interim ex-parte injunction is obtained against the website as also on the sellers operating therefrom, the website is bound to take down the infringing contents immediately.

Thereafter, the interim injunction continues to operate and then the defendants are given time to file their reply before the Court. Once the reply is filed and pleadings are completed, then the plaintiff and the defendant are called upon to lead their evidence, whereupon the issues are framed and the matter is argued. The matter is then adjudicated by the court and consequently, damages and costs are awarded.

In case the rogue website fail to comply with the terms of the order and continue to exhibit, display, advertise or sell the counterfeit goods on the website in contravention of the order, contempt proceedings can be initiated before the Court and against the defendants.

Relevant Provisions For Penalties In The Form Of Imprisonment And Fines:

Information Technology Act, 2000:Under Section 70B(5), iCERT has the power to impose the following penalties: Imprisonment: upto 1 year; Fine: upto 1lakh; Or both

Copyright Act, 1957:

Under section 63, the following penalties can be imposed for infringement of Copyright and other rights covered under the Act. Imprisonment: 6 months up to 3 years. Fine: Rs. 50,000 up to 2 lakhs.Or both

Trademarks Act, 1999:

Under Section 135, following reliefs are granted in suits for infringement and passing off: Remedy of damages; Rendition of accounts; Seizure of property; Destruction of infringing marks/property.

Dynamic Injunction:

Normally such web sites are demarcated as rogue websites, which identities are unknown and they are created for the purposes of carrying out infringing activities only, such as illegal streaming of movies and matches. Here are few of examples where Dynamic Injunctions are enforced against masked rogue/mirror websites. Court also directed to extend injunction against future websites by adding them under Order 1 Rule 10 CPC , by virtue of dynamic injunction.

Hence a right holder is not required to file suit again and again against the counterfeiters and such rogue web sites. Dynamic injunctions are very useful tool devised by the Hon’ble High Courts in India to deal with such situation. It is very useful , especially in corona time, where such counterfeiting activities has grown rapidly.

Uniqueness of such injunction orders are that by single injunction orders, many rogue web sites are restrained. In Judgment titled as Disney Enterprises Vs Kimcartoon.to & ORS , more than 118 web sites are restrained in one go.

Few of such orders are as follows.

• 12.03.2020/CS(Comm) 594 of 2019/DHC/V Kameshwar Rao, H.J.
  Disney Enterprises Vs Rlsbb.Unblocked.Ltda
• 2019 (78) PTC 375 (Del.)
  UTV Software Communication Ltd. And Ors. v. 1337X. to and Ors.,
• 27.07.2020 CS (Comm) 275 of 2020 /DHC/Rajiv Sikdar, H.J.
  Disney Enterprises Vs Kimcartoon.to & ORS. (118 Rogue Websites)

Written By: Ajay Amitabh Suman, Advocate: Hon’ble High Court Of Delhi