On 11 October 2018 the Arenys de Mar Trial Court Number 1 convicted the defendant in a case involving handbags which infringed a Robin Ruth Group (RRG) design for a crime against intellectual property under Article 273.3 of the Criminal Code. The case concerned the infringement of a Community design consisting of multiple repetitions of a city name which were all depicted in a singular typography, except for one which was highlighted using a different-sized font.
In August 2014 the police found 240 handbags which infringed a RRG design in the defendant's warehouse following the filing of a criminal complaint by the RRG. Notably, in May 2013 the defendant had signed a settlement agreement with the RRG following the seizure of hundreds of products which infringed other RRG designs in which it had undertaken not to infringe in future either those designs or any other designs owned by the RRG.
The court held that a crime had been committed, as the infringement in question had involved both an objective and a subjective element.
Objective element As regards the objective element of the crime, it was proven that the defendant had possessed the infringing products and introduced them into trade. The court – following the criteria set out in a 25 May 2018 Barcelona Appeal Court decision – stipulated that the 'introduction into trade' is defined as "any conduct [apart from distribution] in which the protected object is put at the reach of third parties (including instances when nobody accepts the offer and purchases the object)".
In short, it constitutes conduct which places objects "in any way to make them available to third parties interested in purchasing them".
With regard to the infringing products, the court examined the expert reports and affirmed that the expert report drafted by the police was the most credible, given that it was objective and neutral. The report sustained that:
- the differences between the products were aimed at masking the copies; and
- the seized products and the original products had produced the same general impression.
Subjective element As regards the intention behind the crime (ie, the subjective element), the court held that this had been proven by the contradictions in the defendant's cross-examination and the documentary evidence (ie, the signed agreement), as well as the defendant's silence when faced with certain questions from both the private and public prosecutors.
In accordance with the Barcelona Appeal Court's judgment, the Arenys de Mar Trial Court Number 1 confirmed that the 'legally protected value of a criminal offence' constitutes:
the right to use and exploit exclusively an intellectual property right which derives from its official register… or, the protection by a threat of the criminal norm to prevent third parties from carrying out acts reserved for the owner of such right.
The judgment is currently pending the defendant's appeal.
For further information on this topic please contact Barbara Krystkowiak 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.
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.
