Supreme Court interprets Penal Code in counterfeiting case

The Criminal Law Chamber of the Polish Supreme Court has considered whether the legislature intended that the purchasing and selling of counterfeit goods remain unpunished or be regarded as a prohibited act under Articles 291 and 292 of the Polish Penal Code (Case I KZP 8/08, June 30 2008).

The prosecutor accused the defendant, an individual, of buying and selling counterfeit clothes bearing the registered trademarks EVERLAST, ADIDAS, PUMA and NIKE. The prosecutor brought charges under Article 291 of the code, which reads as follows:

"1. Whoever acquires property obtained by means of a prohibited act, assists in its disposition, receives such property or assists in the concealment thereof shall be subject to the penalty of deprivation of liberty for a term of between three months and five years.

2. In the event that the act is of a lesser significance, the perpetrator shall be subject to a fine, the penalty of restriction of liberty or the penalty of deprivation of liberty for up to one year."

The first instance court ruled that the defendant was guilty of knowingly buying and selling counterfeit clothes bearing registered trademarks and imposed a fine of PLN2,000 (ie, 50 times a daily rate of PLN40).

The defendant appealed, alleging that the first instance court had erred in interpreting Article 291 of the code. The defendant argued that Article 291 applies only in cases where the counterfeit goods are introduced to the market for the first time, as stated by the Supreme Court in a May 24 2005 decision (Case I KZP 13/05). In that case, the Supreme Court interpreted the phrase 'introducing to the market' in Article 305(1) of the Industrial Property Law, which reads as follows:

"Anyone marking goods with a counterfeit trademark for the purpose of introducing them to the market, or introducing to the market goods bearing such trademarks, shall be liable to a fine, limitation of freedom or imprisonment for a period of up to two years."

The court defined the phrase 'introducing to the market' as the placing on the market for the first time of goods bearing a counterfeit trademark by the producer or importer of those goods. Therefore, the subsequent sale of such goods did not fall within this definition and could not be the subject of criminal proceedings.

However, Article 305(1) was amended on July 31 2007 to read as follows:

"Anyone marking goods with a counterfeit trademark for the purpose of introducing them to the market or anyone engaged in the turnover of goods bearing such a trademark shall be liable to a fine, limitation of freedom or imprisonment for a period of up to two years."

In the present case, the court held that the defendant's behaviour did not fall within the definition of 'introduction to the market' under Article 305(1). Moreover, the court held that the turnover of goods bearing counterfeit trademarks did not fall within the scope of Article 291 and 292 of the code, as such goods were not "property obtained by means of a prohibited act".

Tomasz Rychlicki, Patpol - Patent & Trademark Attorneys, Warsaw

Supreme Court interprets Penal Code in counterfeiting case

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