On July 5 2012 the importer of a consignment of 450 handbags was sentenced by Barcelona Criminal Court No 28 for committing a crime against IP rights, as set out in Article 274.1 of the Criminal Code.

The handbags were imported from China in July 2009 and were seized by the Customs Authorities of the Port of Barcelona under the EU Customs Regulation (1383/2003) for infringement of the HUGO BOSS trademark.

The seized handbags bore the sign 'I3055' presented in such way as to cause confusion with the well-known BOSS trademark owned by Hugo Boss.

In order to assert the defence based on the positive right to use a registered trademark provided in Article 34.1 of the Trademark Act, the importer signed a licence contract with the owner of I3055. However, the court considered that the appearance of I3055 can be confused close up with the trademark BOSS. It took a different approach from certain criminal case law that had acknowledged the right to use a registered trademark until it was cancelled and sentenced the accused.

In the ruling, the court pointed out that it was not a question of analysing the similarity between the trademark I3055 and the well-known BOSS mark, but rather that the sign reproduced on the final products looked intentionally like the well-known trademark owned by the injured party. This fact proved the existence of bad faith in the actions of the accused.

The failure of the defence based on ius utendi (the right to use a registered trademark) in criminal proceedings constitutes a victory for well-known trademark owners who must litigate before the Spanish criminal courts.

For further information on this topic please contact Barbara Krystkowiak at Grau & Angulo by telephone (+34 93 202 34 56), fax (+34 93 240 53 83) or email (b.krystkowiak@gba-ip.com).

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