CTM courts accept use of photos taken by private detectives as evidence

Spain
In two recent decisions, the Spanish Community Trademark Courts (the Alicante Court of Appeal and the Commercial Court Number 1 of Alicante) have declared that use as evidence of photographs taken by private detectives in a public setting was legitimate, if such use guaranteed the constitutional right to effective judicial protection of trademark and design owners. Both matters opposed Carolina Herrera Ltd on the one hand, and Geocomp Import Export and Geo Mat Trading SL on the other.
 
The first decision was the April 5 2011 order of the Alicante Court of Appeal, which dismissed the appeal brought by Geo Mat against an order of the Commercial Court Number 1 of Alicante in which the latter had granted Carolina Herrera’s request for a preliminary injunction. The preliminary injunction concerned bags which allegedly infringed various CAROLINA HERRERA registered trademarks and designs. The court confirmed that the bags should be seized and stored, and that Geo Mat and Geocomp should provisionally stop marketing them.
 
The second decision was a judgment by the Commercial Court Number 1 of Alicante, dated June 17 2011. The court, after declaring that Geocomp’s industrial design was null, deemed that the defendants had infringed CAROLINA HERRERA Community trademarks and designs. The court thus ordered that:
  • the defendants ceased marketing the allegedly infringing bags;
  • the bags, their packaging and corresponding advertising material be destroyed; and
  • the defendants pay compensation to Carolina Herrera.
In both cases, the defendants had argued that their bags could not be compared with Carolina Herrera’s bags on the basis of photographic evidence. This argument was based on Article 283.3 of the Civil Procedure Act, which establishes that evidence obtained through activities prohibited by law is inadmissible. The defendants claimed that the taking of photographs by private detectives constituted a trespass of privacy within the scope of Law 1/1982 on the Civil Protection of the Right to Honour, Personal and Family Privacy and Self-Image.
 
In response, the Alicante Court of Appeal and, subsequently, the Commercial Court Number 1 of Alicante (which expressly quoted the decision of the Court of Appeal), declared that use as evidence of photographs taken in stores open to the public was legitimate. The decisions were based on the following reasoning:
  • Spanish law recognises the use of private investigators to obtain information on individuals (Article 19.1 of Law 23/1992 on Private Security Services).
  • The fact that the private investigation of individuals is recognised by law means that such an activity cannot be considered as an illegal trespass (Article 2.2 of the Organic Law 1/1982).
  • The Civil Procedure Act recognises the use of reports prepared by private detectives as evidence (Article 265.1.5).
Based on the foregoing, the Court of Appeal expressly stated that:
 
"taking pictures in a public setting is not trespassing, when the information obtained responds to the exercise of the right to effective judicial protection and there are reasonable and well-founded grounds to use this type of evidence, as is the case here.
 
The two rulings are in line with previous decisions of the Spanish Courts, in which it was held that the use as evidence of images taken by private detectives in public settings was valid (eg, see the Supreme Court decision of February 22 2007 and the Valencia High Court decision of June 20 2006).
 
Dalia Ferrando, Grau & Angulo, Barcelona

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