The Ministry of Justice has launched a draft bill to amend the Criminal Code, which is being analysed by the Council of the State before it makes its way through Parliament. In its existing form, the draft bill includes a set of reforms that will directly and indirectly affect crimes against industrial and intellectual property.
Several important proposed changes will have an impact on IP crimes should they be implemented.
The amendments criminalise the following behaviour:
- facilitating access to works protected by copyright;
- promoting or facilitating the distribution, marketing, reproduction, plagiarism, access or public display of works protected by copyright, or deleting, modifying, circumventing or facilitating the circumvention of technological measures used to prevent such behaviours;
- establishing links on the Internet to works protected by copyright which facilitate the active and systematic location of such works illegally offered on the Internet – in particular, providing sorted and classified link listings; and
- providing services or developing activities that incorporate a sign that is identical or confusingly similar to a registered trademark.
The changes consolidate a staggered system of criminal responsibility depending on the seriousness of the conduct, which began with the 2010 reform of the Criminal Code (for further details please see "Impact of Criminal Code amendments on IP rights"). The aim is to ensure that the punishment is commensurate to the gravity of the offence committed.
The reforms do not affect patents, utility models, designs or topographies of semiconductor products.
The following offences constitute trademark infringement:
- the manufacture, production, import, wholesale offer, wholesale distribution, wholesale marketing or storage of infringing goods;
- retail offer, retail distribution or retail marketing of infringing goods, as well as providing services or developing activities that incorporate an identical or confusingly similar sign to a registered trademark; and
- occasional or street vending of infringing goods.
The following offences constitute copyright infringement:
- wholesale distribution, wholesale marketing, wholesale import, wholesale export or wholesale storage of infringing goods, as well as the promotion or facilitation of such behaviours by eliminating, modifying, circumventing or facilitating the circumvention of the technological measures used to prevent such behaviour;
- reproduction, plagiarism, retail distribution, retail marketing or facilitation access, public display, retail import, retail export, retail storage of infringing goods, as well as the realisation of these behaviours by eliminating, modifying or circumventing or facilitating the circumvention of technological measures used to prevent them; and
- occasional or street vending of infringing goods.
The changes impose stricter penalties in general:
- For the offences listed in the first points above, the penalty increases from between six months' and two years' imprisonment to between one and four years' imprisonment.
- For the offences listed in the second points above, the penalty - previously between three and six months' imprisonment or community service - changes to between six months' and three years' imprisonment.
- For the offences listed in the third points above, the penalty was previously a fine of between three and six months or community service; this changes to between six months' and two years' imprisonment. However, in the case of occasional or street vending (excluding the cases listed in the second points, as is currently envisaged in the Criminal Code since the 2010 reform), the court will be allowed to impose a fine of between one and six months or community service (instead of imprisonment of between six months and two years) if this is considered appropriate, taking into consideration the characteristics of the infringer and the amount of the potential or obtained profit, provided that no aggravating circumstances set out in the Criminal Code exist (ie, the profit obtained is economically significant, major damage has been caused, the infringer belongs to an organisation designed to infringe IP rights or the infringement involved children under the age of 18).
- For the infringement of plant variety registries, the period of imprisonment increases from between six months and two years to between one and three years.
- For the manufacture, import, circulation or possession of means to facilitate the removal or neutralisation of technical devices used to protect computer programs or any copyright protected work, the period of imprisonment increases from between six months and two years to between six months and three years.
- For trademark and copyright infringement, the period of imprisonment increases from between one and four years to between two and six years. The fine increases from between 12 and 24 months to between 18 and 36 months.
The draft bill also contains the following amendments:
- The subjective element of animus lucrandi (intention to make a profit) of IP crimes is replaced by the more general provision of 'direct or indirect profit'.
- The definition of 'obtained profit' is broadened to include profit that potentially could have been obtained, as a benchmark to determine the starting point in certain types of case.
- Misdemeanours are eliminated, although some remain in the Criminal Code as minor crimes.
- The possibility of declaring the seizure of goods and effects belonging to a person convicted of certain offences (including IP offences) is widened if the court considers there to be sufficient evidence to suspect that such goods or effects originate from other criminal activities similar to those for which the offender has been convicted.
- The regulations on the criminal liability of corporations have been revised to define the concept of 'adequate control', breach of which triggers criminal liability. This will depend on the size of the corporation.
- The regulations on repeat offences and the parole system have been revised.
- The regulations on the suspension and substitution of prison sentences have been revised.
- Equal standing will be afforded to convictions issued by the courts of other EU member states as to those imposed by the Spanish courts; in addition, Spanish sentences will apply to other EU member states where relevant.
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