Counterfeit Sales Fall Under Trade Marks Act Not Copyright Act: Bombay HC

The Bombay High Court has barred the misapplication of intellectual property laws, ruling that the mere sale of counterfeit products bearing a company's name constitutes a trademark violation rather than a criminal infringement of copyright. The Bench quashed an FIR registered under the Copyright Act, holding that the mandatory procedural safeguards of the Trade Marks Act cannot be bypassed by mischaracterizing the nature of the alleged offence.

In an application seeking the quashment of criminal proceedings, Justice M. W. Chandwani adjudicated upon the legal distinction between artistic works protected under copyright and brand identifiers regulated under trademark law. The Bench was hearing a challenge to an FIR registered against a business owner who was allegedly found in possession of counterfeit tin sheets bearing the name of 'JSW Steel Ltd.'

Key Takeaways

Trademark vs. Copyright Distinction

Using a company's name on a product is a trademark issue; copyright only applies if a specific 'artistic work' or logo is allegedly infringed.

Procedural Mandates are Non-Negotiable

Investigations into counterfeit goods must strictly follow the Trade Marks Act, 1999, which requires searches to be conducted by officers not below the rank of Deputy Superintendent of Police.

Bar on Police Overreach

An investigation conducted by a Sub-Inspector for offences that require a higher-ranking officer and a Registrar's opinion is fundamentally vitiated and legally unsustainable.

Pre-requisite for FIR

For an FIR to be validly registered under Section 154 of the Cr.P.C., the allegations must prima facie disclose a cognizable offence based on the specific statutes invoked.

Court Rationale on Copyright Subsistence

The Bombay High Court emphasized that for a copyright infringement claim to stand under Section 51 and Section 63 of the Copyright Act, 1957, the work in question must fall within the classes defined under Section 13. The bench noted that while a logo can qualify as an 'artistic work,' a mere company name does not automatically enjoy the same protection unless specifically alleged and proven to be an artistic creation.

The Bench highlighted that "In the FIR, there is no allegation that any logo of the Company has been used on those Tin sheets. It is a specific case of the complainant that the name of the Company was used on those tin sheets. Needless to mention that there is difference between using a Logo of a Company and name of a Company. That apart, it is not alleged in the FIR that either the Logo or the name of the Company is an Artistic work, which is a condition for existence of Copyright."

Invalidity of Investigation and Search

Applying the Trade Marks Act, 1999, the Bench found that Section 115(4) creates an express legal bar against searches conducted by low-ranking officers. In this case, the raid was conducted by a Police Sub-Inspector, which directly contradicted the statutory mandate requiring an officer of the rank of Deputy Superintendent of Police or equivalent, along with the prior opinion of the Registrar. Therefore, the Bombay High Court allowed the instant criminal application while quashing the FIR in question for the offence punishable under Sections 51 and 63 of the Copyright Act, 1957.

Ratio

The mere use of a company's name on a counterfeit product does not constitute an infringement of copyright under the Copyright Act, 1957 unless the name or logo is alleged to be an 'artistic work.' Such acts fall exclusively under the Trade Marks Act, 1999, and any investigation failing to comply with the rank-based authorization and the mandatory requirement of obtaining the Registrar’s opinion under Section 115 is void ab initio.

Background

The dispute originated when an Investigating Officer from EIPR (India) Pvt. Ltd., authorized by JSW Steel Ltd., conducted a raid at M/s New Kausal Traders in Saoner. The raiding party seized 137 counterfeit tin sheets valued at Rs. 1,57,550/-, leading to the registration of an FIR for copyright infringement. The applicant challenged the FIR, arguing that the case was one of trademark violation, not copyright, and that the investigation by a Sub-Inspector violated Section 115 of the Trade Marks Act, 1999.

The Bench relied on the principles laid down in State of Haryana and others Vs. Bhajan Lal and others regarding the quashing of FIRs where allegations do not constitute a cognizable offence. It also referenced Somjeet Mallick Vs. State of Jharkhand and others ( "2024 INSC 772": 2024 CaseBase(SC) 926) to affirm that a cognizable offence is a prerequisite for registration under the Code Of Criminal Procedure, 1973. Distinguishing the case from Priya Shrivastava Vs. State of M.P. and others, the court noted that without allegations of logo misuse, the copyright claims were unsustainable. Consequently, the Bombay High Court exercised its inherent powers under Section 528 of the Bharatiya Nagarik Suraksha Sanhita, 2023 to quash the proceedings.

Case Details:
Case No.: CRIMINAL APPLICATION [APL] NO. 918 OF 2026
Neutral Citation: 2026:BHC-NAG:15223
Case Title: Shadab Sheikh Qayyum Sheikh v. State of Maharashtra and Anr.
Appearances:
For the Petitioner(s): Mr. Shoeb Asgar Khan and Mr. Syed Salman Ali, Advocates
For the Respondent(s): Mr. Abhijeet G. Mate, A.P.P. for Non-applicant no.1/State; Mr. Kartik N. Shukul with Mr. Gaurav Khatwani, Advocates for Non-applicant no.2

Source: 2026 CaseBase(BOM) 7165