Patents and trademarks: Prosecution

patentes y marcas acciones penales











Is there a possibility to act under criminal law to defend the rights protected by the Patent and Trademark?

In addition to civil and administrative actions, possible using criminal proceedings to defend the rights of industrial property. Is, some brands prefer to use this route, despite its drawbacks as deterrent to future violations of their rights, by the severity of the penalties.

The Criminal Code devotes Articles 273 a 277 a los offenses relating to Industrial Property.

Patents and Utility Models

Imprisonment of six months with a fine of establishing two more years 12 a 24 months looking for industrial or commercial purposes, without consent of the owner, with knowledge of its registration manufactured, matter, possesses, used, offers or introduces into commerce patent protected objects, Utility Models, industrial models or line art or topography of a semiconductor product (art. 273 C.P.). The same treatment was applied to one, for the same purposes, use or offer the use of a patented process or a product obtained by the same.


The penalties are six months to two years in prison and a fine of 12 a 24 months, for without owner's consent and knowledge of the registry, play, mimics, modify or otherwise, usurp a distinctive sign or import or market a product with the same. Only in case of retail and considering the characteristics of the offender and the amount (for example, in the frequent case of "street vendors") may only impose a fine of three to six months, or work to benefit the community 31 a 60 days. If the benefit does not exceed 400 euros, the fact is punishable as a lack of Article 623.5 the C.P. (art. 274 C.P.).

Plant Varieties

The same penalties that have been applied for trademarks, without the owner's consent and with knowledge of registration, produce, play, sale, offer, exports, posea import the plant material protected by su record (art. 274 C.P.).

Designations of Origin

The same sentences of the above who use an appellation of origin or a geographical indication representative legally protected in the course of trade apply, knowing of its existence (art. 275 C.P.)

How come common elements to previous crimes we highlight:

1.- The behaviors listed, they are exemplifications, comprising any conduct that "offends" the right registered.

2.- Will produce a likelihood of confusion market.

3.- It requires the right is Protected by Law, namely, duly registered. Known and famous marks should be protected by other legal means as the figure of the scam are excluded.

4.- No consent of the owner.

5.- Direct knowledge by the offender registry.

6.- There is not the culpable commission or recklessly.

7.- Requires existence of commercial or industrial purpose.

8.- For marketing products protected by trademark law (art. 274.2 C.P.), required to be done "knowingly".

In the cases of particularly serious, imprisonment may reach four years, with fine 12 a 24 months and disqualification from the exercise of profession related to the offense of 2 a 5 years old. It is considered especially serious if the amount or damage is particularly high, if the perpetrator belonged to an organization dedicated to such offense or if used under 18 years old.

The rights holder must choose between criminal and civil satellite. To conduct criminal investigations just a complaint and the prosecution would assume the charge. Criminal proceedings are slower, and entails the application of the principle "in dubio pro reo" but is more serious to the effect "deterrence" involved and as we have seen before, You can start with a simple complaint. And on the way criminal (as in civil) may apply precautionary measures to ensure the effectiveness of the action.

Sometimes, used the criminal actions in defense of patents and trademarks in what I call "trademark bullying", but this issue will be another entry.

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