Vehicle workshop owner convicted for using labels featuring BOSCH trademark on his machines

Facts
Appeal
Court of Appeal decision

The Castellon Court of Appeal (Section 2) recently confirmed the criminal conviction of a vehicle workshop owner for a crime against industrial property rights consisting of a six-month prison sentence. Further, the court imposed the additional penalty of disqualification from standing for public office during the time of the sentence and payment of the procedural costs, reserving the right to take civil actions that may correspond to the injured party.

Facts

From the proven facts recorded in the sentence issued on 30 May 2019 by Castellon Trial Court Number 3, the Castellon Court of Appeal observed that the defendant owned three machines in his workshop, all of which were a similar green to Bosch's corporate colour. Further, the defendant had placed stickers with a logo imitating that of the Bosch brand on each machine.

Neither the labels nor the machines were authorised by Bosch, nor did the machines operate with Bosch software. They therefore lacked authorisation from the legitimate owner of the industrial property rights (Bosch), which was detrimental to the brand as they were perceived as official by the workshop's clients and were misleading as to the contracted service.

The fact that BOSCH is a word mark duly registered with the EU Intellectual Property Office under Number 67.744 was a decisive factor.

Because these acts constitute a crime against industrial property rights under Article 274 of the Criminal Code, the judge sentenced the workshop owner to six months' imprisonment and an additional penalty.

Appeal

The defendant appealed the first-instance decision and demanded his acquittal. The defendant questioned the trademark registration and alleged an error in the assessment of the evidence. He also argued that no expert report had been issued regarding the characteristics or similarities between the official logo and the imitated one.

The private prosecution challenged the defendant's appeal and refuted the allegations in their entirety. The public prosecutor also requested that the appeal be dismissed.

Castellon Court of Appeal decision

The Castellon Court of Appeal dismissed the defendant's appeal, stating that no error was observed in how the evidence had been assessed and that it shared the judge's considerations.

The Castellon Court of Appeal reasoned that the defendant had been present during the police inspection of the workshop, an inspection that had been ratified at the hearing by the National Police agents who had conducted the raid and the witness who had accompanied them, and at which the machines bearing the Bosch labels had been visible. Further, pictures of the machines bearing the Bosch labels were included in the case file.

Since the defendant could not deny that the inspection had taken place, he argued that he had not intended to mislead customers by using Bosch labels. However, the Castellon Court of Appeal observed that the logical inference resulting from the visible placement of the brand's logo on the machines was precisely to cause confusion or create an association with the Bosch brand.

In this regard, the Castellon Court of Appeal paraphrased the judge's sentence, as it could be concluded from the statements, interventions and police report that:

• the machines used by the workshop owner were of a brand other than Bosch, despite displaying labels with said name, which not only harmed the trademark owner, but also misled consumers about the contracted service;
• a specific report regarding the confusion created among consumers was not required, especially since the labels appeared to be original and the machines were a similar colour to the original ones and were in a workshop dedicated to the same activity as the services provided by Bosch (ie, the diagnosis and repair of vehicles); and
• it was irrelevant whether the machines in question were in a restricted area with no through-road signs, as this did not prevent customers from seeing the machines and could, in consequence, mislead them as to the contracted service.

The Castellon Court of Appeal also determined that "it [did] not seem serious" to question the industrial property rights ownership in the appeal, as this had not been questioned during the earlier proceedings, the defendant's counsel having had access to the case file, regardless of previous and underlying actions in relation to the criminal complaint filed by the injured party.

In conclusion, the Castellon Court of Appeal confirmed the judge's sentence and also ordered the defendant to pay the procedural costs of the appeal.

This decision is final.

For further information on this topic please contact Maria Girbau at Grau & Angulo by telephone (+34 93 202 34 56) or email (m.girbau@ga-ip.com). The Grau & Angulo website can be accessed at www.ga-ip.com.