The Valencia Court of Appeal recently fully upheld a judgment issued by Valencia Trial Court 8 sentencing the managing director of a company for trademark infringement as set out in Article 274 of the Criminal Code, and also sentenced the company for the damages caused.

Facts

On March 13 2009 the Valencia Port Customs Office seized, among other products, 900 belts branded with the sign 'BCCSS HOGO BCCSS' in a clear attempt to imitate the well-known BOSS HUGO BOSS trademarks.

As a result of the seizure, Hugo Boss filed a criminal complaint against the importers of the goods.

Article 274 of the Criminal Code provides that the objective requirement for the crime of trademark infringement is both the exact reproduction of a registered trademark without the rights holder's consent and its imitation, modification or misappropriation in a way that may be confused with the registered trademark. However, in practice, the criminal courts often deem imitation infringements such as this to be an issue to be resolved by the civil courts.

In the case at hand Valencia Trial Court 8 sentenced the importer for a crime against intellectual property, applying Article 274 of the code and taking into consideration the arguments set forth by the scientific police in a report concerning the seized products. The report considered that both the alphanumeric number of characters and the similar shape of the words used in the belts seized by Customs imitated and were reminiscent of the BOSS HUGO BOSS trademarks.

The defendant appealed.

Decision

The Valencia Court of Appeal fully endorsed the first-instance judgment, confirming the penalties of:

  • an eight-month prison sentence;
  • payment of a fine;
  • payment of damages to Hugo Boss (with the importer as the subsidiary liable for the damages);
  • the destruction of the 900 infringing belts; and
  • the payment of legal costs.

Comment

This Valencia Court of Appeal judgment is indeed positive for two reasons. First, it clearly establishes that the imitation of a distinctive sign in a way that may be associated or confused with the well-known trademark of a third party (in this case, HUGO BOSS) constitutes a trademark infringement and as such constitutes a criminal offence. Second, the decision was issued in Valencia, a hotspot for entry by sea of counterfeit products into the Spanish market.

For further information on this topic please contact Angel Escoriaza at Grau & Angulo's Madrid office by telephone (+34 91 353 36 77) or email (a.escoriaza@gba-ip.com). Alternatively, please contact Jordi Camó at Grau & Angulo's Barcelona office by telephone (+34 93 202 34 56) or email (j.camo@gba-ip.com). The Grau & Angulo website can be accessed at www.gba-ip.com.

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