Ius utendi defence ineffective in criminal proceedings

In a judgment issued on July 5 2012, the Criminal Court Number 28 of Barcelona has found that the importer of a consignment of 450 handbags was guilty of committing a crime against industrial property rights, as set out in Article 274.1 of the Spanish Criminal Code.

In July 2009 a consignment of handbags from China was seized by the Customs Authorities of the Port of Barcelona pursuant to the EU Customs Regulation (1383/2003) for suspected infringement of the industrial property rights of Hugo Boss Trademark Management GmbH & Co Kg.

The seized handbags bore the sign ‘I3055’, which was presented in such a way as to cause confusion with the well-known trademark BOSS, owned by Hugo Boss. In order to assert the defence based on the positive right to use (ius utendi) a registered trademark under Article 34(1) of the Spanish Trademark Act, the defendant had signed a licence agreement with the owner of the registered trademark I3055. However, the court considered that the appearance of the mark I3055 could be confused, at a close distance, with the trademark BOSS. In contrast to certain earlier criminal case law acknowledging the right to use a registered trademark until it is cancelled, the court found the defendant guilty.

In the ruling, the court pointed out that, in criminal proceedings such as these, the issue was not whether the mark I3055 was confusingly similar to the well-known BOSS mark; rather, the issue was whether the sign displayed on the handbags was intended to look like Hugo Boss’ well-known trademark - which showed bad faith on the part of the defendant.

The fact that the ius utendi defence could not be used in these criminal proceedings constitutes a victory for owners of well-known trademarks who need to litigate before Spain’s criminal courts in order to protect their marks.

Barbara Krystkowiak, Grau & Angulo, Barcelona