In a March 7 2011 decision, the Valencia Court of Appeal accepted Spanish criminal courts' jurisdiction over a case in which the Spanish customs authorities retained thousands of counterfeit goods coming from China and destined for Italy. The shipment, which originated in China, was supposed to enter the European Union through Valencia and continue on to Italy.

Valencia Maritime Customs officers discovered the goods in a regular customs inspection. Under EU Regulation 1383/2003, they seized the goods for infringing FC Barcelona's Community trademark in its shield emblem and informed FC Barcelona of the suspected IP infringement.

As it proved impossible to locate the consignee that would apply the simplified procedure set out in the regulation, FC Barcelona initiated proceedings before the Valencia criminal courts. The case was assigned to the Valencia Criminal Court Number One, which discontinued proceedings on the grounds that it had no jurisdiction. Since the goods had not been destined for Spain, the court held that proceedings should instead be initiated before the Italian courts, where the consignee was located.

FC Barcelona filed an interlocutory appeal before the court alleging that, according to the Criminal Code, the importation of the goods into Spanish territory constituted a criminal offence, and thus the criminal court should have jurisdiction over the case. However, the criminal court dismissed the appeal. FC Barcelona subsequently appealed that decision before the Valencia Court of Appeal, which overruled the earlier decision and accepted Spanish jurisdiction. It mainly based its decision on the following:

  • According to the customs documents, the goods were meant to be dispatched by the Valencia customs authority and then remitted to their consignee in Italy.
  • The court understood 'import' to mean "introducing goods into a country".
  • The Criminal Code punishes the importation of goods that bear a registered IP right without the holder's authorisation and with the aim of gaining financial benefit.
  • The transit of counterfeit goods through Spanish territory implies that the goods had been introduced into the country.

Moreover, the Valencia Court of Appeal considered that although the goods were destined for an Italian company, once they entered Spain they could have easily been commercialised there. Thus, it issued a ruling accepting the criminal court's jurisdiction and ordered for proceedings to continue.

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