Once again, the President of the 2nd Chamber of the Supreme Court, has provided insight in a ruling deemed significant, this time regarding the safeguarding of trademarks within criminal proceedings.
It is well understood among those of us engaged in trademark litigation that there have been two different criteria between our Courts concerning the interpretation and application of the article 274 of the Spanish Criminal Act. On one hand, some Courts adopt a “subjective” interpretation of the term confusion, condemning only when it is believed that the counterfeit may lead the consumer to mistakenly think is acquiring the genuine. On the other hand, other Courts take an objective approach, aligning with the practices of Civil-Commercial Courts, which assess confusion by examining (objective) elements that indicate the similarity between the counterfeit sign and the registered trademark.
The Supreme Court, in its ruling No. 682/24, dated June 26, resolves this dichotomy in the interpretation of article 274 of the Spanish Criminal Act by asserting that an objective interpretation should prevail. It clarifies that the credulity of the purchaser of the counterfeit is not an element of the criminal offense, thereby refusing to subordinate the criminal protection of the trademark to consumer confusion regarding the acquisition of an original versus a counterfeit.
The Supreme Court substantiates this reasoning based on the current Spanish legislation governing IP, exploring the intent of the legislator and taking into account the international treaties assumed by Spain, as it demonstrated in the ruling of the “Desigual” case (also commented here https://www.linkedin.com/posts/fernando-ortega-644b711a_la-sentencia-de-marchena-sobre-la-pirater%C3%ADa-activity-7173730640335384578-diVF?utm_source=share&utm_medium=member_desktop).
Furthermore, statements from the ruling emphasize:
– The legal system must provide protective mechanisms to ensure that the commitment to safeguarding industrial property, as enshrined in the Spanish Constitution, is upheld;
– The significant and irreversible progression towards the consolidation of European law;
– The evolving framework of criminal protection, influenced by progressive internalization;
– European Union Law moves in a direction contrary to the exonerative interpretation sought by the defense.
These elements indicate a change in the protection of industrial and intellectual property rights in criminal proceedings in Spain, that should at least be considered among the rest of the Spanish Courts.
Fernando Ortega
Lawyer
