Importer convicted for refilling empty printer ink and toner cartridges

In a judgment of May 11 2013, Section 2 of the Valencia Court of Appeal has found an Indian citizen guilty of an IP offence for importing a shipment containing 26,545 printer ink and toner cartridges bearing the brand of a prestigious multinational IT company into Spain. The goods were imported into the country via the Port of Valencia through a company that the defendant had incorporated in Spain.  

The Court of Appeal's judgment is particularly important in light of an increasingly frequent phenomenon in the digital printing field: the refilling of ink and toner cartridges using empty, genuine branded cartridges, repackaging them and selling them as if they were original products. The Court of Appeal has put an end to such practice by declaring that the fact that the brand of the cartridges is identified on the boxes, and that recycled cartridges - or cartridges which imitate the branded product - are used to create the appearance of the original product, clearly demonstrates that the defendant sought to mislead consumers into believing that this was in fact a branded product. The court noted that the products need only look acceptable, which was undoubtedly the case here in view of what had been observed by the court.                   

With regard to the quality of the ink and toner used to refill the cartridges, the judgment states that it does not matter whether these have been analysed, or whether the quality of the products has been compared, given that this category of offence does not lay down any requirements as to whether the imitation must possess certain qualities compared to the genuine product; rather, it is sufficient that the imitation has been manufactured without the trademark holder’s consent, and that it "reproduces, modifies or otherwise uses an identical or confusingly similar distinctive sign".            

The judgment also clarifies a number of issues which have been interpreted differently by the Spanish courts:

• It recognises that the party which appears in the 'notify parties' box on Customs documents is generally the one that receives the goods; and
• It recognises that the offence starts from the moment when the goods are deposited at the port and placed at the disposal of the holder of the documentation, with the Customs facilities clearly forming part of the national territory.                                                                                                                       

The Court of Appeal confirmed that the importer in this case should:

• be sentenced to 15 months’ imprisonment;
• be disqualified from the right to stand for public office for the duration of the sentence;
• pay a fine over a period of 18 months at a rate of €20 per day; and
• pay the civil liability and legal costs, including those of the private prosecution.           

Juan José Caselles and Tránsito Ruiz, Elzaburu, Madrid