Are there criminal sanctions for infringement of any intellectual property rights, and if so, what are they and how are they invoked?
Intellectual Property (3rd edition)
Using a false trade description relating to trademark (Trade Descriptions Act 2011): The general penalty for body corporate is a maximum RM25,000 and for a second or subsequent offence, a maximum RM50,000. The general penalty for non-corporate body is a maximum RM10,000 or to imprisonment for a maximum 1 year, or both. For a second or subsequent offence, a maximum fine of RM20,000 or to imprisonment for a maximum 3 years or both.
Public Prosecutor initiates prosecution at its discretion.
Copyright infringement – a fine of not less than RM2,000 and not more than RM20,000 for each infringing copy, or to imprisonment for up to 5 years or to both and for any subsequent offence, to a fine of not less than RM4,000 and not more than RM40,000 for each infringing copy or to imprisonment for a term not exceeding 10 years or to both.
Pursuant to Norwegian law, criminal sanctions are available for infringement of any intellectual property rights. The general minimum and maximum sentences for infringement of patents, designs, trademarks, business names and copyright are fines or prison up to one year. In case of particular aggravating circumstances, the minimum and maximum sentences are fines or prison up to three years. For rights according to the Marketing Act, such as trade secrets and protection against third parties’ use of products etc., only serious breach of the provisions are criminally sanctioned. In such cases, the minimum and maximum sentences are fines or prison up to six months.
If a rights holder wishes to invoke criminal sanctions, the infringement must be reported to the police. The prosecuting authority may neglect prosecution, unless public considerations indicate otherwise. To date, criminal proceedings to stop infringement are uncommon.
Criminal sanctions are available in respect of the main intellectual property rights. Penalties range from a fine to a term of imprisonment of up to five years, or both.
Notably, IP rights holders may take it upon themselves to prosecute infringers upon the grant a fiat from the Attorney General’s Chambers. In a private prosecution, any search and seizure will be carried out by the specialist Intellectual Property Rights Branch of the Singapore Police Force.
- Trade marks. Counterfeiting, falsely applying a trade mark to goods, and importing and selling of counterfeits all attract criminal sanctions. The courts are strict about this and the benchmark sentence is typically a term of imprisonment, especially if the counterfeit goods were sold commercially from a permanent establishment.
- Copyright. Dealing in a copyright work (including the importation, distribution, or sale) with the knowledge, actual or presumed, that the work is an infringing copy will attract criminal liability.
- Patents. Falsely claiming that a product is patented or that is the subject of a pending patent application is an offence. There are, however, no criminal sanctions for patent infringement.
- Industrial Designs. It is an offence to claim, falsely, that a design applied to any article is registered. Such a claim may be made expressly or by implication.
According to our Industrial Property and Criminal Law, the sanctions are: imprisonment and/or fine.
These criminal sanctions may be invoked by means of a criminal action filed before the Specialized IP Prosecution section at the Federal Attorney General’s Office.
Criminal sanctions are available in China for severe infringing activities of IP rights, including copyright, trademarks, patents and trade secrets.
In the fields of patent, criminal sanctions only apply to the act of counterfeiting patents, whoever counterfeits the patent of another shall, if the circumstances are serious, be sentenced to fixed-term imprisonment of not more than three years or criminal detention and shall also, or shall only, be fined.
Any person who takes below actions shall bear criminal liabilities: (1) Use a trademark that is identical with other’s registered trademark on identical goods without consent of the registrant and constitutes a crime; (2) Counterfeits, or marks without authorization, representations of a registered trademark of another person, or offers for sale such representations and constitutes a crime; (3) Knowingly sells goods that bear a counterfeited registered trademark and constitutes a crime. The infringement act can be reported before public security organs to invoke criminal sanctions.
Whoever, for the purpose of reaping profits, has committed one of the following acts of copyright infringement and gains a fairly large amount of illicit income, or when there are other serious circumstances, is to be sentenced to not more than three years of fixed-term imprisonment, criminal detention, and may in addition or exclusively be sentenced to a fine; when the amount of the illicit income is huge or when there are other particularly serious circumstances, he is to be sentenced to not less than three years and not more than seven years of fixed-term imprisonment and a fine:
- copy and distribute written, musical, movie, televised, and video works; computer software; and other works without the permission of their copyrighters;
- publish books whose copyrights are exclusively owned by others;
- duplicate and distribute audio-visual works without the permission of their producers;
- produce and sell artistic works bearing fake signatures of others.
Yes. The use, commercialization or production of any item that contains a registered trademark could be fined with up to US $ 19 700.
The only criminal sanctions are for copyright infringement which is intentional and is tantamount to trade in counterfeit goods. A charge would have to be laid with the South African Police Services who would then investigate the matter and the Public Prosecutor would decide on prosecution.
The law on patents does not provide for any criminal sanctions in case of patent infringement. However, in case of a court finding that there has been a patent infringement, the Court may order the infringer not to repeat the infringement in the future; if so, the Court would have the power to impose for compliance purposes a monetary fine of up to 59,850.00 EUR or to imprisonment up to 3 years, or to both of these sentences.
In case of a finding of trade mark infringement by a court, the court may order the infringer not to repeat the offense in the future. In case of non-compliance, the Court may impose for compliance purposes a monetary fine of up to 59,850.00 EUR or to imprisonment up to 3 years, or to both of these sentences.
Further, in case any person acts or procures that a false entry is made in the Registrar’s Trade Marks register or acts or procures that a document be drafted in which it is falsely presented as a copy of the trade marks register entries, or introduces or professes or procures that such false document be presented as evidence, is guilty of an offence which in case of conviction is subject to imprisonment up to 1 year or to a fine which would not exceed 1710 EUR or to both of these sentences.
As far as copyright infringement is concerned, following a conviction for copyright infringement a court may order the infringer not to repeat the offence. In case of non-compliance, the Court would have the power to impose for compliance purposes a monetary fine of up to 59,850.00 EUR or to imprisonment up to 3 years, or to both of these sentences.
The fraudulent use of a design is a criminal offence which is punishable with a prison sentence of up to two year or with a fine up to 85,500 EUR or to a combined sentence.
According to the Law on the Control of Movement of Goods which violate IP rights, Law 61(I)/ 2018, it is an offence for any person to be involved in the following acts in relation to goods which violate IP rights:
- The submission of a customs declaration for the supply of goods in free circulation, for exportation or reexportation in accordance with the Community Customs Code;
- The importation or exportation of goods from the customs territory of the Republic;
- The subjection of goods in special regimes in accordance with the Union Customs Code.
Any person who purposely commits any of the aforementioned offences may be convicted and sentences to a fine of up to 30,000 EUR, or to a prison sentence not over 3 years or to a combination of these two sentences.
Any person who unwarily commits any of the aforementioned offences may be convicted and sentences to a fine of up to 15,000 EUR.
There are criminal sanctions for infringement of intellectual property rights. For example, a person who commits patent infringement is subject to punishment by imprisonment with work for a term of up to ten years and/or a fine of up to JPY 10,000,000. Criminal sanctions are imposed based on the investigation conducted by the police and the filing of an indictment with the court by a prosecutor. A complaint from the injured party is required to file an indictment for copyright infringement. Indictments based on trademark infringement are frequently issued while those based on patent infringement are almost never issued.
Patent, copyright, trademark, design, topography rights and plant variety rights infringement is considered a criminal offence. However, criminal liability requires an infringer to have acted wilfully. The sanction to a criminal offense is imprisonment of up to 1 year and/or a fine. If the offender acts for commercial gain (i.e. the offender acts in the manner of a profession to make a living), the sanction is imprisonment of up to 5 years or and/or a fine.
Criminal proceedings against IP infringements can be initiated by lodging a complaint before the competent cantonal criminal prosecutions authorities, either orally or in writing. Only if the offender acts for commercial gain, he/she must be prosecuted ex officio.
Yes, there are. The Brazilian Intellectual Property Law establishes crimes against patents (articles 183-186), for which penalty can go up to 3 years of imprisonment or application of fine; industrial designs (articles 187 and 188), for which penalty can go up to 1 year of imprisonment or application of fine; marks (articles 189 and 190), for which penalty can go up to 1 year of imprisonment or application of fine; geographical indications (articles 192 – 194), for which penalty can go up to 3 months or application of fine; and against unfair competition, which comprises, among other aspects, the protection of confidential information (article 195), for which penalty can go up to 1 year of imprisonment or application of fine.
Furthermore, the Brazilian Cultivar Law stipulates that infringing cultivar rights is also a crime.
The Brazilian Penal Code dictates that violating copyrights and neighbouring rights is punishable by imprisonment that can go up to 1 year.
Some intellectual property rights have criminal sanctions for infringement in certain contexts. The penalties vary from a fine to a term of imprisonment of up to 10 years.
In respect of copyright, an offence is committed if a person performs an infringing act for a commercial purpose knowing, or with reasonable belief, that the act would infringe the copyright. This includes making, dealing in, or possessing the infringing article, communicating the work to the public in the course of business, or publicly performing the work.
In respect of registered trade marks, criminal liability attaches to counterfeiting activity i.e. to a person who, with a view to gain for himself or another, or with intent to cause loss to another, and without the consent of the proprietor, sells or hires, for profit, goods bearing an identical mark or one that is likely to be mistaken for a registered mark. Importantly, the trade mark owner is not required to show that the infringer acted dishonestly. Where the offence relates to the making of an article specifically designed or adapted for making copies of a sign identical to, or likely to be mistaken for, a registered trade mark, or having such an article in his possession in the course of business, the owner is required to show that the infringer had knowledge that such articles would be used for producing goods bearing the mark.
With regard to registered design rights, it is an offence if the infringer, without the consent of the owner, intentionally copies a UK or Community registered design to make a product knowing or having reason to believe that the design was registered. It is also an offence to falsely represent a design, trade mark or patent as registered.
Complaints procedures also exist, through bodies such as trading standards, which are involved in the criminal enforcement of IP.
There are no criminal sanctions for patent infringement.
Patents: No criminal sanctions for patent infringement.
Trademarks: Yes, certain acts of trademark infringement may result in criminal liability usually invoked by the trademark owner; it is a criminal offense to use the symbol ® in connection with goods or services, even where the mark is not registered.
Copyrights: Yes, certain acts of commercial copyright infringement constitute a criminal offense.
Designs: Yes, a person who exploits a registered design through occupation and in a commercial manner, in one of the ways specified below and without the permission of the design owner shall be liable to a significant fine under section 61(a)(4) to the Penal Code-1977:
1. Manufacture of a product bearing the identical design as a registered design;
2. Importing a product that has a design identical to a registered design.
Yes, there are:
An infringement of a patent right (Section 142(1) Patent Act), of an utility model (Section 25 Utility Model Act), of a topography right (Section 10(1) Semiconductor Protection Act) or acquiring, using or disclosing a trade secret without authorisation to a third party (Section 23 Act on the Protection of Trade Secrets, Section 203(1), (2) Criminal Code), an infringement of the trade mark right (Section 143(1) Trademark Act), an infringement of a registered design right (Section 51(1) Design Act), an infringement of the copyright (Sections 106 et seq. Copyright Act) and an infringement of the plant variety rights (Section 39(1) Act on the Protection of Plant Varieties) can result in imprisonment for up to three years or a fine, in case the infringement was committed deliberately.
Infringers may face criminal sanctions up to three years of imprisonment and a fine of 300, 000 euros for copyright (Article L.335-2-1 of the IPC), neighbouring rights (Article L.335-4 of the IPC), designs (Article L521-10 of the IPC), plant varieties certificates (Article L.623-32-2 of the IPC), patents (Article L.615-1 of the IPC), supplementary protection certificates (Article L.615-1 of the IPC), utility certificates (Article L.615-1 of the IPC) and semiconductors (Article L.615-1 of the IPC).
For trademarks, collective and certification marks, the sanction is up to four years of imprisonment and a fine of 400,000 euros (Article L.716-9 of the IPC).
For manufacturing secrets, the sanction is up to two years of imprisonment and a fine of 30,000 euros (Article L.621-1 of the IPC and Article L.1227-1 of the Labour Code).
For legal entities, the fine is equal to five times the amount set for individuals (Article 131-38 of the Criminal Code). Furthermore, the sanctions mentioned in article 131-39 of the Criminal Code such as dissolution or closure of the company shall apply.
Criminal prosecution of infringement can either be pursued by the right holder or directly by the public prosecutor.
There are few provisions related to criminal sanctions set out for the infringement of IP rights. Firstly, there is Article 127 of the IPC that punishes any third party that refused to disclose to the Court the information on the origin and distribution networks of the infringing goods or services advertised/marketed/sold required under Article 121 bis IPC or give false information.
It should be mentioned also Articles 473 and 474 of the Italian Criminal Code that punish any third party that infringe, use, introduce within our country and sell counterfeited goods.
If the infringement is particularly serious, criminal action based on these provisions may be brought by the Public Prosecutor, i.e. ex officio without private prosecution.
The criminal route is frequently invoked in Italy to induce a deterrent effect against the infringement.
As for copyright, the general provision is set out in Article 171 ter ICL that expressly punishes with a fine and imprisonment many types of conducts of third parties who acting for non-personal purposes and without the consent of the copyright holder, duplicate, reproduce, transmit sell or made available to the public in any way protected work. This rule also punishes the conduct of third parties who, although not having taken part in the duplication and reproduction of the protected work, introduce in the territory of the States, sell, rent and in any way make available to the public the work itself. Article 171 bis ICL is dedicated to the punishment of duplication, reproduction, distribution, sale or rent of software and database. The residual provision stated in Article 171 ICL punishes with a fine the conducts that are not included in the above-mentioned rules and further provides that, if the said fact harms the right of paternity, is able to prejudice the reputation of the author or concerns work not publicly available, it will apply the sanction of imprisonment.
- Criminal sanctions are provided for various acts of trademark and copyright infringement. Unfair competition law also includes criminal provisions. Trademarks: According to article 156 of law 4072/2012 anyone who (a) intentionally uses a mark identical with or confusingly similar to a registered TM, (b) uses a famous TM in violation of Article 125 paragraph 3 (c), with the intent to exploit or harm its reputation, (c) intentionally puts into circulation, possesses, imports or exports goods or provides services under a mark of another proprietor (d) intentionally commits the acts of transiting counterfeit goods through Greece or of importing such goods for re-export, uses the mark on genuine goods that the right holder intended to market as no-name, or removes the trade mark from genuine goods and markets them as no-name goods or under a different mark, is punished by imprisonment of at least six months and a fine of at least six thousand euros. In case of trademark counterfeiting (unlawful use of identical marks for identical or similar products) when particularly high profits arise or very significant damages occur, or when the infringement is on a commercial or professional scale, stricter penalties are to be imposed (a minimum of two years' imprisonment and a financial penalty between 6.000 to 30.000).
The criminal prosecution does not takes place ex officio but only after the filing of a complaint by the trademark owner.
- Copyright: Art. 66 of Law 2121 /1993, criminalizes various acts of copyright infringement such as the unlawful fixation of a work or of copies, direct or indirect reproduction temporarily or permanently in any form, in whole or in part, translation, adaptation, alteration or transformation thereof, distribution to the public by sale or other means, or possession with the intent of distributing, renting, performing in public, broadcasting by radio or television or any other means, communication to the public works or copies by any means, import of copies of a work illegally produced abroad without the consent of the author and, in general, exploitation of works, reproductions or copies being the object of copyright or acts against the moral right of the author to decide freely on the publication and the presentation of his work to the public without additions or deletions.
Such acts are punishable with imprisonment of no less than a year and to a fine of 2.900-15.000 EUR. More severe sanctions apply in case of professional or commercial scale infringement or in case the financial gain sought or the damage caused by the infringement is particularly great.
Similarly, criminal sanctions are provided in case of infringement of related rights, of database rights, in case of an unauthorized use of computer programs or other violations.
Criminal prosecution takes place ex officio.
- Generally, in case of IP infringement, general criminal law provisions, such as those for forgery and/or fraud (articles 216 and 386 of the Greek Penal Code) may be also applicable, depending on the facts of each case.
Yes, there are criminal sanctions for infringement in India in connection with trade mark, and copyright in India for acts amounting to falsification/infringement. Further, an infringer may also be liable for search and seizure of the infringing goods.
Further, the offences under the Trade Marks Act, 1999 and the Copyright Act, 1957, by virtue of the First Schedule table II of the Code of Criminal Procedure, 1973, are cognizable offence and the registration of the trademark is not compulsory for initiation of criminal action.
An infringer hence may be liable for criminal actions under Sections 482 (Punishment for using false property mark), Section 483 (Punishment for counterfeiting a property mark used by another), Section 486 (Punishment for selling goods marked with a counterfeit property mark) and Section 488 (Punishment for making use of any such false mark) of the Indian Penal Code, amongst others.
The Criminal remedies are invoked by filing a complaint before the Court of competent jurisdiction.
Yes, there are criminal sanctions for the infringement of intellectual property rights. Our Penal Code establishes a punishment of imprisonment of between 2 to 5 years, along with 60 to 365 days-fine and disqualification, depending on the gravity of the offence and the economic damage in the following cases:
a.) A product protected by a patent of invention or a manufactured product through the use of a procedure protected by a patent of invention obtained in the country;
b.) A product protected by a utility model obtained in the country;
c.) A product protected by an industrial design registered in the country;
d.) A registered plant variety in the country, as well as its reproduction material, propagation or multiplication;
e.) A layout design (typography) registered in the country, a semiconductor circuit that incorporates said layout design (topography) or an article that incorporates such semiconductor circuit;
f.) A product or service that uses an unregistered mark identical or similar to a trademark already registered in the country.
Likewise, in cases of crimes against copyright and related rights, a penalty of imprisonment of 2 to 4 years, and 10 to 60 days-fine may be requested against anyone who, although is authorized to publish a work, does it in the following ways:
a.) Fails to mention in the copies the name of the author, translator, adapter, compiler or arranger.
b.) Stamps the name of the author with additions or deletions that affect the author's reputation as such, or in another case, the translator, adapter, compiler or arranger.
c.) Publishes the work with abbreviations, additions, deletions, or any other modification, without the consent of the right holder.
d.) Publishes several works separately, when the authorization has been granted to publish them together; or publishes them together, when he or she has only been authorized the publication of them separately.
Yes, the infringement of certain IPRs is a criminal offence in Malta. The relevant offences are found either in the Criminal Code, or in specific titles within the chapter of law dedicated to the specific IPR.
Violation of Trademarks
The Maltese Criminal Code provides that the infringement of a trademark in specific scenarios amounts to a criminal offence classified as industrial fraud. In the main, the acts which would qualify as a criminal offence include the forging or altering of names, marks and distinctive devices, or knowingly making use of same; using a mark calculated to deceive purchasers or sells goods bearing such a mark; putting on the market goods in respect of which a distinctive trademark has been registered, after removing the trademark without the consent of the owner thereof; knowingly making, keeping or transferring to any person, any die, block, machine or other instrument for the purpose of forging, or of being used for forging, a trademark; distributing or importing for trade any goods bearing a fraudulent imitation of a mark.
Proceedings may be instituted by the Police ex officio, and on conviction, the accused may be found liable to imprisonment for a term from four months to one year.
Violation of Copyright
The Maltese Criminal Code also provides for the violation of copyright. The article provides against the printing, manufacture and distribution of any item in violation of copyright, and against having in one’s possession such an article with a view to carrying out said acts. The offence must be carried out by a person who commits the offence in the exercise of any trade or in the course of business, or with a view to gain or intention to cause. Proceedings are instituted by the Police on complaint of the injured party, and the accused may be found liable to imprisonment for a term not exceeding three years or to a fine (multa) of not less than three thousand Euro (€3,000) and not more than twenty-four thousand Euro (€24,000) or to both such fine and imprisonment.
Violation of Registered Designs
The Patents and Designs Act also provides for criminal offences related to registered design rights. According to the Act, any person who with a view to gain, or with intent to cause loss, and without the consent of the proprietor exploits a registered design may be found guilty of an offence and on conviction will be liable to imprisonment for a term not exceeding three (3) years or to a fine (multa) of not more than twenty-three thousand and two hundred and ninety-three Euro and seventy-three cent (€23,293.73). It is also an offence to make false entries onto the register of designs, and to put into circulation or distribute products falsely representing that a design is registered.
It is also an offence to use in connection with any business any device or emblem that is calculated to lead others to believe that the person is employed by or supplies goods or services to the President of Malta.
Violation of Patents
The Patents and Designs Act itself contains provisions within it which create criminal offences. According to this Act, whoever puts into circulation, or sells any item falsely representing that it is a patented shall, on conviction, be liable to a fine (multa) of not less than two hundred and thirty-two Euro and ninety-four cent (€232.94) and not more than eleven thousand and six hundred and forty-six Euro and eighty-seven cent (€11,646.87).
The Trademark Law declares following certain acts as offences:
- Counterfeiting or imitating a registered mark so as to mislead or confuse the public or using in bad faith any counterfeited or imitated mark.
- Identifying one’s goods or services, in bad faith, with a mark owned by others.
- Unlawfully inscribing upon one’s mark, papers or commercial documents, a representation that might lead to the belief that one has obtained registration of such mark.
- Deliberately, and in bad faith, failing to affix one’s registered trademark on the goods or services it distinguishes.
- Knowingly possessing tools or material intended to be used in the imitation of registered trademarks or famous trademarks.
Monetary punishments, depending on the offence committed, can be between USD 270 and USD 266,700. A recidivist may be handed double punishments, as provided for each specific offence, and may also be obliged to temporarily close his business.
Under the Patent Law, the law does not clearly provide criminal sanctions. The law imposes double financial penalty against repeat infringement of patent rights. The Saudi Patent Committee can refer a case to the court if there are criminal elements in the violation of Patent rights however it does not stipulate such criminal elements.
- Trade marks – the Trade Marks Act 1995 specifies a number of activities that constitute criminal offences in relation to registered marks. These offences are primarily concerned with counterfeiting and falsifying registered marks. For example, it is a criminal offence to: falsify or remove a registered trade mark; falsely apply a registered trade mark; make a die, block, machine or instrument that for use in a trade mark offence; draw a registered trade mark for use in a trade mark offence; sell, possess, distribute or import a good, knowing that the trade mark has been falsified or removed. The commission of an offence under the Act can result in imprisonment or fines, or both.
- Copyright – the Copyright Act 1968 provides criminal sanctions to protect copyright. By way of example, under the Act, it is an offence to: knowingly import, possess, sell, distribute or commercially deal with an infringing copy; offer for sale infringing copies of computer programs; and transmit a computer program to enable it to be copied when received. The commission of an offence under the Act can result in imprisonment or fines, or both.
- Plant breeder’s rights (PBRs) – under the Plant Breeder’s Rights Act 1994, it is an offence to: make a false statement in an application of other document given to the registrar for the purposes of the act; falsely claim ownership of a PBR; falsely claim that a PBR extends to cover another plant variety that is not a dependent variety or essentially derived from their variety; falsely claim that a plant variety has been granted PBR protection. The commission of an offence under the Act can result in imprisonment or fines.
- Federal, as well as state and territory police may investigate and commence prosecutions for breaches of federal trade marks, copyright, and PBRs laws.
Criminal sanctions are available for certain types of copyright and trademark infringement, but not available for patent infringement. For copyright, 35 U.S.C. § 506(A) governs when criminal sanctions are appropriate. Under the statute, a party may be criminally charged when a person wilfully reproduces or distributes a work for purposes of commercial advantage or private financial gain.
Trademark enforcement is still primarily civil, but a party may be criminally liable under 18 U.S.C. § 2320(d)(1). This statute is reserved for trademark infringement connected to trafficking goods or services using the infringing mark, such as counterfeiting.
Trade Secret misappropriation can also be prosecuted as a criminal offense. Under 18 U.S.C. § 1831, trade secret misappropriation is punishable if it is done to benefit a foreign government, instrumentality, or agent. Common commercial theft or trade secret misappropriation, however, is punishable under 18 U.S.C. § 1832.