On 1 October 2004, the new Law 15/2003, of 25 November, came into force, reforming the Penal Code and introducing some important practical changes which will affect criminal protection of intellectual property rights:

1) The need for right holders to file a complaint has now been eliminated. This means that the Police forces and the Public prosecutor can (and must) pursue IP crimes ex-officio, independently of whether right holders file criminal actions or not.

2) Criminal protection is extended to plant variety rights, penalising two types of activities:

  • Producing, reproducing, conditioning, displaying, selling, exporting, importing or possessing vegetable matter for reproduction or multiplication of a protected plant variety (i) with agricultural or commercial purposes, (ii) without the consent of the holder and (iii) with knowledge of the registration.
  • Any of the above-mentioned acts, when vegetable matter of reproduction or multiplication is used in the name of a protected plant variety, when it does not belong to such a variety.

Criminal protection has been extended to plant variety rights in Spain

3) Penalties and fines for criminal offences against intellectual property rights have been standardized and increased.

4) Criminal acts which are considered particularly serious are now defined more precisely according to objective criteria: (i) economic importance (ii) belonging to organisations or associations whose aim is the infringement of IP rights (iii) the use of minors.

5) Parallel imports of products which infringe copyright or trademark rights are penalised, when certain requirements are met:

  • Criminal intent (dolus)
  • Lack of authorisation from the right holders.
  • Importing from countries outside the European Union or
  • Importing of products acquired in Member States but not directly from the holder of the right in the country of origin or with his or her consent.

Parallel imports of products which infringe copyright or trademark rights are now criminal offences

Practical difficulties are certainly envisaged with regard to the seizure of parallel imports by the Spanish Customs Authorities, given that Community Regulation 1383/2003 expressly excludes suspending the release of those goods.

In any event, even though it would be contradictory for Spanish Customs Authorities to allow the release of goods for which there is a criminal procedure underway, it will be some months before it can be seen, in practice, exactly how the Spanish Customs authorities treat this type of import.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.