Significant Decision of the Valencia Court of Appeal in a Trademark Infringment Case
The Valencia Court of Appeal (in Spain) has issued a significant decision in a trademark infringement case.
The Valencia Court of Appeal has recently affirmed a judgment issued by the Trial Court n° 8 of Valencia. The lower court had convicted the managing director of a Chinese company for committing a crime against Intellectual Property for trademark counterfeiting as in violation of article 274 of the Spanish Criminal Code. In addition the court had convicted the company itself for the damages originated.
The facts that gave rise to this case are the following: In March 2009, the Valencia Port Customs authorities seized and retained, among other goods, 900 belts incorporating the sign “BCCSS HOGO BCCSS” with the clear intention to resemble the well known “BOSS HUGO BOSS” trademarks. Subsequent to the seizure, HUGO BOSS filed a criminal complaint against the importer of the mentioned products.
The Trial Court n° 8 of Valencia, after the trial, issued a decision convicting the importer of the seized belts for a crime against Intellectual Property.
The Court’s decision surprised many in the Spanish IP world. The Spanish Criminal Code in its article 274 provides the objective condition of the trademark counterfeiting crime not only as the exact reproduction of a registered trademark without its holder’s consent, but also its imitation, modification or misappropriation in a way that may be confused with the registered trademark. In reality, criminal courts had previously deemed infringements such as the one at issue as matters to be heard by civil courts.
In this case, nevertheless, the Trial Court n° 8 of Valencia convicted the importer of the seized belts for a crime against Intellectual Property, applying the above referred Spanish Criminal Code provision and taking into consideration the arguments stated by the Spanish Scientific Police in its counterfeiting report of the goods in dispute. Such report concluded that both the alphanumeric number of characters and the similar morphology of the words used in the belts seized by the Valencia Customs authorities, violate and are reminiscent of the “BOSS HUGO BOSS” trademarks.
The defendant filed an appeal against this judgment. However, the Valencia Court of Appeal fully upheld the first instance judgment, confirming the penalties of: an 8 month prison sentence, the payment of a fine, the payment of damages to HUGO BOSS (with the importer company as subsidiary liable for said damages), the destruction of the 900 infringing belts and the payment of legal costs.
This Valencia Court of Appeal judgment is certainly a very positive one for the trademark holders mainly for two reasons. Primarily because it clearly establishes that the imitation of a distinctive sign in such a way that may be associated or confused with the well-known trademark registered by a third party (in this case HUGO BOSS) is viewed as trademark counterfeiting and as such constitutes a criminal offence. Secondly, because the controlling decision has been issued in Valencia, a hotspot for entry by sea of counterfeit products into the Spanish market.
