Introduction

A much debated issue among Spanish legal practitioners concerns which party should be held responsible for the costs associated with storing and destroying IP infringing goods which are the object of judicial proceedings.

Previously, there have been contradictory judgments – sometimes issued by the same court of appeal – in criminal proceedings initiated as a result of a complaint filed by a brand owner whose products have been illegally reproduced and seized by customs authorities under EU Regulation 1383/2003 (and later EU Regulation 608/2013).

These contradictory judgments resulted from claims filed by shipping companies in the course of criminal proceedings. These claims were directed against the rights holders – due to their financial solvency and easily identifiable whereabouts – instead of against the clients of the shipping companies (the importers and real owners of the goods, whose solvency and whereabouts were generally less clear), therefore aiming for a broad interpretation of the EU regulation beyond administrative proceedings.

The interpretation which has gained most ground considers that:

  • the regulation should be applied only within the framework of the administrative proceeding for which it is foreseen; and
  • consequently, such storage costs should not be borne by the rights holder while the judicial proceeding is ongoing.

Recent attempts by logistics companies in commercial and civil jurisdictions

Recently, logistics companies have tried to apply this discussion to other jurisdictions, requesting the same broad interpretation of the EU regulation and adding other arguments so that the courts in such jurisdictions – which are therefore not involved in the criminal proceedings – can issue judgments on such claims.

In the commercial jurisdiction, a logistics company filed an action claiming the breach of an alleged rental agreement consisting of a deposit of goods and invoked provisions of the Spanish Civil Code. In January 2017 the Zaragoza Commercial Court No 2 upheld the allegation of a lack of jurisdiction brought by the rights holder and refrained from issuing a judgment regarding the merits of the case, shelving the proceeding initiated as a result of the legal action and re-directing the claimant to the civil jurisdiction.

In the civil jurisdiction, the logistics company invoked the same arguments as those set out in the commercial jurisdiction. In September 2017 the Zaragoza Court of First Instance No 19, this time deciding on the merits of the case, dismissed all of the plaintiff's claims and accepted, in their entirety, the arguments posed by the rights holder in response to the lawsuit.

The court resolved that no claim could be made by a party which had not requested any deposit of the goods and which was not the owner of such goods, but rather the injured party of the committed crime. The court therefore confirmed that following the actions of a third party, the injured party should not be held responsible for the costs brought about by the seizure of goods and for any related handling and insurance costs.

This article was first published by the International Law Office, a premium online legal update service for major companies and law firms worldwide. Register for a free subscription.

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