Counterfeit car radio importers hit a ROADSTAR block

The Special Criminal Court of Maringá has ruled that the import into Brazil of counterfeit ROADSTAR car radios amounted to trademark infringement with the aggravated circumstance of infringement of a well-known mark (Criminal Action 036/2003).

During a tax fraud investigation, the Brazilian customs authorities discovered a cargo of car radios bearing the mark ROADSTAR. The authorities seized the products on suspicion of counterfeiting and contacted the owner in Brazil of the mark ROADSTAR - Switzerland-based Roadstar Management SA. Within the 10-day limit of the customs' temporary seizure, Roadstar confirmed that the car radios were counterfeits and filed a criminal action against the owners of importer Ocean Comercial Importadora Ltda to obtain (i) a permanent injunction of seizure, and (ii) a conviction on the grounds of trademark infringement.

Ocean's owners alleged that:

• they were not responsible as they were acting on behalf of another Brazilian company (Sodico Importação e Comércio de Produtos Eletrônicos Ltda), which in turn represented Paraguayan company Colisee Sociedad de Responsabilidad Ltda;
  
  
• the final destination of the products was Paraguay; and
  
  
• Colisee was the owner of trademark registrations for ROADSTAR in Paraguay.

However, the court ruled that the imported products infringed Roadstar's trademark rights. The court found that:

• the terms of the agreement between Ocean and Sodico, which had a clause excluding Ocean's liability, were limited to the civil sphere and thus were not sufficient to exclude Ocean's owners' criminal liability;
  
  
• the products' final destination was Brazil, as evidenced by Colisee's advertising on a website located at 'roadstar.com.br' (Roadstar obtained an interim injunction in a related civil court action to suspend the website); and
  
  
• ROADSTAR is a well-known mark, which was an aggravated circumstance.

Ocean's owners were fined about $300 each.

The decision could still be subject to an appeal.

Rodrigo Borges Carneiro, Dannemann Siemsen Bigler & Ipanema Moreira, Rio de Janeiro