Amendments to Criminal Code come into force

Spain

Amendments to the Spanish Criminal Code came into force on July 1 2015. The amendments include a set of reforms that will affect crimes against intellectual property directly and indirectly.

Among these reforms, the following must be highlighted:

1. Criminalisation of new behaviours - the following is now expressly deemed to be a crime:

  • facilitating the access to, or the localisation on the Internet of, works protected by copyright providing organised and classified listings of links;

  • promoting or facilitating the reproduction, plagiarism, distribution, public display, financial exploitation, access to or localisation on the Internet of works protected by copyright, or deleting, modifying, circumventing or facilitating the circumvention of the technological measures used to prevent such conduct;

  • providing services or developing activities that incorporate a sign identical or confusingly similar to a registered trademark; and

  • reproducing or imitating a sign identical or confusingly similar to a registered trademark for use in the commission of certain offences.

2. The amended Criminal Code consolidates a staggered system of criminal responsibility depending on the seriousness of the conduct, which began with the 2010 Criminal Code reform. The aim is to adjust the criminal response to the gravity of the offence, differentiating between several offences; this brings about a major reformation of the criminal provisions that previously regulated such offences.

2.1 For trademark infringement (the reform does not affect other industrial property rights, such as patents, utility models, designs or topographies of semi-conductor products), the code distinguishes between the following offences:

(2.1.1) the manufacturing, production, importation, wholesale offer, wholesale distribution, wholesale marketing and storage of infringing goods;

(2.1.2) the retail offer, retail distribution and retail marketing of infringing goods, the provision of services or the carrying out of activities that incorporate a sign identical or confusingly similar to a registered trademark, as well as the reproduction or imitation of a sign identical or confusingly similar to a registered trademark for use in the commission of these offences; and  

(2.1.3) the occasional or street sale of infringing goods.

2.2. For copyright infringement, although the draft bill also distinguished between offences depending on whether they concerned wholesale, retail or occasional or street sales, the bill finally approved by Parliament only distinguishes between occasional or street sales and the rest, applying the same penalties regardless of whether the offences are conducted on a wholesale or retail basis. Thus, the final bill distinguishes between the following offences:

(2.2.1) the reproduction, plagiarism, distribution, public display or financial exploitation of works protected by copyright, as well as their transformation, interpretation or performance;

(2.2.2) facilitating the access to, or the localisation on the Internet of, works protected by copyright providing organised and classified listings of links;

(2.2.3) the occasional or street sale of protected works;

(2.2.4) the export or storage of protected works;

(2.2.5) the import of protected works, whether they have a legal or illegal source in their country of origin, except the import of such products from a member state of the European Union, provided that they have been acquired directly from the holder of the rights in that state or with its consent;

(2.2.6) promoting or facilitating the carrying out of the offences set out in points (2.2.1) and (2.2.2) above by deleting, modifying or circumventing the technological measures used to prevent such offences; and

(2.2.7) manufacturing, importing, putting into circulation or possessing for sale means to facilitate the suppression or neutralisation of technical devices used to protect computer software or any other protected work.

3. The amended Criminal Code introduces stricter penalties overall.

For trademark infringement, the penalties are as follows:

(i) The penalty for the offences listed in point (2.1.1) above has increased from six months to two years’ imprisonment under the previous legislation to one to four years’ imprisonment.

(ii) The penalty for the offences listed in point (2.1.2) above has increased from a three to six months’ fine or community service previously to six months to three years’ imprisonment.   

(iii) The penalty for the offences listed in point (2.1.3) above has increased from a three to six months’ fine or community service previously to six months to two years’ imprisonment. However, judges will be allowed to impose a one to six months’ fine or community service (instead of the penalty of six months to two years’ imprisonment) if it is considered appropriate, bearing in mind the characteristics of the infringer and the amount of the potential or obtained profits, and as long as none of the aggravating circumstances set out in the Criminal Code apply.

iv) The penalties for aggravated trademark infringement have increased from one to four years’ imprisonment previously to two to six years’ imprisonment.

For copyright infringement, the penalties are as follows:

(i) The penalty for the offences listed in points (2.2.1) and (2.2.2) above has increased from six months to two years’ imprisonment under the previous legislation to six months to four years’ imprisonment.

(ii) Moreover, for the offences listed in point (2.2.2), the interruption of the website is expressly foreseen if it broadcasts exclusively or predominantly protected works, allowing the judge to grant any precautionary measure intended to protect IP rights. Exceptionally, and only in case of repeated offences and as long as it is proportionate, efficient and effective, the judge may order that access to this website be blocked.

iii) The penalty for the offences listed in point (2.2.3) above has increased from a three to six-month fine or community service previously to six months to two years’ imprisonment. However, for occasional or street sales, the judge will be allowed to impose a one to six months’ fine or community service (instead of the penalty of six months to two years’ imprisonment) if considered appropriate, bearing in mind the characteristics of the infringer and the amount of the potential or obtained profits, and as long as none of the aggravating circumstances set out in the Criminal Code apply.

(iv) The penalty for the offences listed in point (2.2.7) above has increased from six months to two years’ imprisonment previously to six months to three years’ imprisonment.

(v) For the other offences (points (2.2.4), (2.2.5) and (2.2.6)), the penalty of six months to two years’ imprisonment has increased to six months to four years’ imprisonment, except in case of  occasional or street sales.

(vi) The penalty for aggravated copyright infringement has increased from one to four years’ imprisonment previously to two to six years’ imprisonment.

4. The subjective requirement of ‘animus lucrandi’ for copyright infringement has been replaced by the more general requirement of "direct or indirect profit".

5. The concept of ‘obtained profit’ has been broadened and complemented with the addition of the phrase "or what could have been obtained" as a benchmark to determine the starting reference in certain types of cases.

6. Misdemeanours have been eliminated, although some of them remain in the Criminal Code as ‘minor crimes’.

7. Technical improvements have been introduced in the regulation of the criminal liability of corporations, defining the scope of "adequate control" the breach of which will trigger such criminal liability. Criminal liability also depends on the size of the corporation.

8. The regulation of the suspension and substitution of imprisonment penalties, as well as the parole system, has been modified.

9. Convictions imposed by the courts of other EU states are now given the same value as those imposed by the Spanish courts, and the Spanish court sentences will be sent to other EU states.

Jordi Camó, Grau & Angulo, Barcelona

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