Spanish criminal reform gets tough on intellectual property crimes

30 November 2015

Claudia Sevilla, Jose Angel Garcia-Zapata

In 2014 counterfeit goods seized in Spain totalled €177m. Perhaps this was a contributing factor to the Spanish Executive Power approving a new Criminal Code, raising the penalties for intellectual property crimes. Significant changes to the Criminal Procedure Act will also have an impact on activities within the ‘black market’.

This new Code entered into force on 1 July 2015. The reform contains important changes in the field of intellectual property, including the following three trade mark infringement scenarios:

  • The production, importation, distribution or divestment of goods or services without the consent of the rights holder where the infringing party has knowledge of the existence of the trade mark now attracts penalties of 1 to 4 years imprisonment and monthly fines, determined by the judge, payable for a period of 12 to 24 months.
  • In cases of retail sales of infringing goods or services carrying an identical or similar sign, the penalty is now 6 months to 3 years imprisonment.
  • Street trading of infringing products now attracts punishment of 6 months to 2 years imprisonment. However, in such circumstances a judge will take into account the characteristics of the convicted person when considering a more lenient sentence of 1 to 2 months community services or a monthly fine payable for a period of 1 to 6 months.

The Criminal Procedure Act has also been modified to address the early destruction of goods seized in intellectual property crimes, which can now be destroyed once they have been examined. However, samples must be preserved in case further investigation and verification is required.

The regulations concerning the power to confiscate property have been extended to IP crimes. A judge can order the confiscation of goods, even when the accused is not present in proceedings, in circumstances where the said goods infringing IP have been seized from an illegal activity. This regulation seeks to address unjust enrichment from the proceeds of crime. A Bureau of Management and Recovery Assets (Oficina de Recuperación y Gestión de Activos) will be created for this purpose.

A significant change is the disappearance of so-called ‘minor offences’. From now on the criminal offences will be classified as ‘crimes’ and ‘minor crimes’, the latter becoming time barred a year after being committed. This reclassification of ‘minor offences’ to ‘minor crimes’ entails a rise in the penalties applied to certain acts.

The provisions seek to adapt the existing law to IP crime. The extension of the power to confiscate goods and profits of criminal origin will be of great importance in relation to business conducted within the black market in Spain.

This article is part of the Bird & Bird's fifth edition of BrandWrites

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