On 21 April 2021 the Second Section of the Valencia Court of Appeal sentenced the defendant to three years in prison and a fine. The fact that the defendant was a repeat offender and the large volume of goods seized were taken into account.

In 2018, a store in the Manises Industrial Park in Valencia was raided. The defendant had been offering handbags bearing metallic plates of different brands and storing metallic plates as well as unbranded handbags.

The Court indicated that it was clear from the evidence that there had been a commercial purpose to the defendant's actions, due to:

  • the volume of goods located at the shop, which was open to the public;
  • the fact that the products had been displayed on shelves; and
  • the fact that the store was located in an industrial park, from which it could also be inferred that wholesale trade had been taking place.

The Court emphasised that the products had been offered in the full knowledge that they had registered trademarks, given that the defendant had been sentenced previously for IP crimes and that there was a variety of trademarks involved and all were well known.

The Court mentioned that:

  • the handbags bore the logos of highly renowned registered trademarks;
  • the logos used were identical or confusingly similar to the originals; and
  • the circumstances of the sale were of secondary importance, due to the reputation of the trademarks concerned.

The defendant did not provide invoices regarding the origin of the products seized, an investigative step that was requested by the trademark holders during criminal proceedings and by the Court. Neither did the defendant give any explanation of the origin or destination of the products during the trial hearing, nor that he had a licence from the trademark holders to sell the products.

The counterfeit nature of the goods was confirmed by the report examined and ratified during the trial hearing. This was not refuted by the defence with any other report.

Moreover, as already stated, in addition to possessing the seized bags intended for sale, the defendant also stored and manufactured such items for subsequent distribution.

The Court found that the facts constituted an IP crime, punishable under article 274(1) of the Criminal Code – specifically, paragraphs (a), relating to manufacture or production and (b), relating to the offer, distribution or trade wholesale of goods, based on the wording in force at the time the offence took place. The Criminal Code establishes the penalty of three years' imprisonment and the payment of a fine.

The Court also ordered the defendant to pay compensation for moral damages to the trademark holders, since an implied loss existed in the offering of the counterfeit goods. To calculate the amount of damages, the Court considered the average price of the goods, adding a further 25% (the minimum profit that the trademark holders would obtain), as claimed by the trademark holders.

Finally, the costs of both the proceedings and the private prosecutors were awarded against the defendant.

For further information on this topic please contact Victoria López at Grau & Angulo by telephone (+34 93 202 34 56) or email ([email protected]). The Grau & Angulo website can be accessed at www.ga-ip.com.