In two recent Community trademark court cases brought by Carolina Herrera Ltd against Geocomp Import Export and Geo Mat Trading, SL, the Alicante Court of Appeal and Alicante Commercial Court Number One fully accepted the legitimacy of photographic evidence taken by private detectives in public settings, if taken to guarantee the effective judicial protection of trademark and design rights holders.

On April 5 2011 the court of appeal dismissed Geo Mat Trading's appeal against the adoption of a preliminary injunction requested by Carolina Herrera. The preliminary injunction was granted with regard to certain bags that could infringe various Carolina Herrera-registered trademarks and designs. The court ordered the bags' retention and storage, as well as the provisional cessation of their marketing.

The commercial court's decision in the proceedings on the merits followed on June 17 2011. After declaring the nullity of Geocomp's industrial design, the commercial court held that the defendants had infringed Carolina Herrera's Community trademarks and designs. It thus ordered the defendants:

  • to stop marketing their bags;
  • to destroy the bags, as well as their packaging and advertising materials; and
  • to pay the corresponding compensation to Carolina Herrera.

In both cases the defendants argued that the comparison between their bags and the Carolina Herrera bag designs could not be made based on the photographic material submitted with the claim.

Their argument was based on Article 283.3 of the Civil Procedure Act, which establishes that evidence obtained through any illegal activity is inadmissible. The defendants claimed that photographs taken by private detectives constituted an illegal act that trespassed on privacy within the scope of the Law on Civil Protection of the Right to Honour, Personal and Family Privacy and Self-Image (1/1982).

In response, first the court of appeal and then the commercial court (which expressly quoted the court of appeal's previous decision) declared the legitimacy of photographic evidence taken at stores open to the public. The courts reasoned as follows:

  • Spanish law recognises private investigation as means to obtain information on individuals (Article 19.1of Law 23/1992 on Private Security Services).
  • The legal recognition of activities involving private investigations of individuals means that such activity cannot be considered an illegal trespass of privacy (Article 2.2 of Organic Law 1/1982).
  • The Civil Procedure Act accepts reports prepared by private detectives as means of evidence (Article 265.1.5).

Based on these legal facts, the court of appeal expressly stated that

"taking pictures in a public setting is not trespassing, when the information obtained responds to the exercise of the right to effective judicial protection and there are reasonable and well founded grounds to use this type of evidence, as is the case."

The two rulings are consistent with the line established in other matters by Spanish courts, which have accepted the validity of images taken by private detectives in public settings (eg, the Supreme Court decision of February 22 2007 and the Valencia High Court decision of June 20 2006).

For further information on this topic please contact Dalia Ferrando at Grau & Angulo by telephone (+34 93 202 34 56), fax (+34 93 240 53 83) or email ([email protected]).