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“Of the crimes relative to the industrial property”, is the title of the Section 2ª, of the Chapter XI, concerning the crimes relative to the industrial and intellectual property, to the market and to the consumers, of the Title XIII, about the crimes against the patrimony and the socioeconomic order, of the Book II, which contains the crimes and its punishments, of the Penal Code (CP).
It is a section formed by five articles: In the article 273 are penally protected, the patents, utility models and the industrial or artistic designs or topographies of semiconductor products; In the article 274 happens the same, but with the trademarks, trade name and the protected plant varieties; The article 275 gives protection to the designation of origin and geographical indication; The article 276 is an aggravated subtype of the previous offenses, applicable when any the circumstances mentioned in it concur, and; In the last of the articles, the 277, is punished the disclosure of an invention which is the object of a request of secret patent, when it is in prejudice of the national security. Let us now try to analyze each of these articles.
– Article 273:
Let us start reading it, for later studying each of the aspects of which is made up.
The article 273 says:
“Article 273.
1. Shall be punished with the punishment of prison from six months to two years and fine from 12 to 24 months whoever, with industrial or commercial purposes, without consent of the owner of a patent or utility model and with knowledge of its registration, manufactures, imports, possesses, utilizes, offers or introduces in the commerce objects protected by such rights.
2. The same punishments shall be imposed to whoever, in the same way, and for the aims cited, utilizes or offers the utilization of a procedure object of a patent, or possesses, offers, introduces in the commerce, or utilizes the product directly obtained by the procedure patented.
3. Shall be punished with the same punishments whoever carries out any of the acts typified in the first paragraph of this article concurring the same circumstances in relation with objects protected in favor of third party by an industrial or artistic design or topography of a semiconductor product.”
Rights of industrial property which are mentioned:
Before commenting each of the typical behaviors which are punished, it is convenient to know first what we should understand for each of the rights of industrial property mentioned in this article.
Let us start with the patent, and for this we are going to make use of the Law 24/2015, of 24 July, of Patents (Law of Patents). According to its article 4.1, “Are patentable, in all the fields of the technology, the inventions which are new, imply inventive activity and are susceptible of industrial application.”
For later expressly excluding, in its fourth point, from the concept of inventions:
“a) The discoveries, the scientific theories and the mathematic methods.
b) The literary, artistic works, or any other aesthetic creation, as well as the scientific works.
c) The methods and rules for exercising intellectual activities, for games or for economic-commercial activities, as well as the computer programs.
d) The ways of presenting information.”
Although at the end, in its fifth point, this opens the possibility of patenting this type of “inventions” when they form part of a patentable invention, in other words, when the object of the patent is not exclusively the inventions expressly excluded. This fifth point says: “5. The established in the previous point excludes the patentability of the subjects or activities mentioned in it only to the extent that the request of patent or the patent is exclusively referred to one of them considered as such.”
Later, in the article 5 of the Law of Patents are mentioned inventions which, though may meet the requisites mentioned in the fourth article for being patentable, cannot be patentable in any case, like the procedures for the cloning of human beings, or the mere sequence of deoxyribonucleic acid (DNA) without indicating any biological function.
But the interesting is found in the articles 6 and 9, because is where the Law of Patents develops the requisites which all invention shall have for being patentable: the novelty, the inventive activity and the industrial application.
According to its article 6.1, “Shall be considered that an invention is new when it is not comprehended within the state of the technic.” And its second point says, “The state of the technic is constituted for everything which prior to the date of presentation of the request of patent have been accessible to the public in Spain or abroad by a written or oral description, by an utilization or by any other means.”
In the article 8 of the Law of Patents is described the requisite of inventive activity, this says in its first point, “Shall be considered that an invention implies an inventive activity if this does not result from the state of the technic in an evident way for an expert in the matter.”
And lastly, the article 9 in relation to the requisite of industrial application says, “Shall be considered that an invention is susceptible of industrial application when its object may be manufactured or utilized in any kind of industry, included the agricultural.”
With what we have seen, we can, more or less, have an idea on which consists a patent, a new invention, in which there has been inventive activity and which is susceptible of industrial application.
Let us now talk about the utility model. In order to delimit what is protectable according to such denomination, we shall attend to the established by the article 137 of the Law of Patents, which says, “Shall be able to be protected as utility models, according to the established in this Title, the inventions industrially applicable which, being new and implying inventive activity, consists in giving to an object or product a shape, structure or composition from which result some advantage practically appreciable for its use or manufacture.”
As we can see, the patent and the utility model are similar regarding the requisites which the Law of Patents requires for its registration, the novelty, the inventive activity and the industrial application. Conversely, there is also a big difference between them, the ambit of protection of the utility model is more limited.
Finally, we shall talk about the industrial or artistic designs and the topographies of semiconductor products. The article 273 includes them in the same point, but unlike the patents and the utility models, we have to make use of two different laws in order to study how the legislator has shaped, on the one hand, the industrial or artistic designs, and on the other hand, the topographies of a semiconductor product.
The industrial or artistic designs are regulated in the Law 20/2003 of 7 June, of Legal Protection of the Industrial design (Law of Legal Protection of the Industrial Design), whose exposition of motives tells us interesting things: “In the new law, like in the community directive, the distinction between industrial models and drawings corresponds to the 3-D and 2-D designs respectively, it is not reflected into a different legal treatment, and besides the term model is also applied to a different figure, the utility models. Thus, it has been preferred the term industrial design, which is the employed in the common language for designating the projected form for the objects of use which will be mass-manufactured. The maintenance of the traditional terminology in the Spanish version of the current international agreements and of the Community law should not represent any problem of interpretation, for in these texts is not applied either a different legal regime which justifies the denominative difference.”
Therefore, in the Law of Legal Protection of the Industrial Design is used the term industrial design for both, the industrial models and drawings. But then, what happen with the artistic models or drawings? In order to answer this question, we shall continue reading the exposition of motives: “The law does not regulate the figure of the artistic models or drawings of industrial application as an autonomous modality of protection, as it was established in the article 190 to 193 of the Statute of Industrial Property. This figure is not contemplated in the Community law as a differentiated category of the ornamental designs. If the work is object of intellectual property, the author has in any case the rights of exploitation upon it in any way and the possibility of impeding to third parties the commercial exploitation of the copies, since them necessarily imply their reproduction and distribution, right which may be extended to the varieties of this, through the faculty, which is also granted by the copyright, of prohibiting the transformation of the work without its consent. This shall not impede its registration as design too, if the conditions established by the law are met, and in this case its protection would be absolute, even against the subsequent independent creator.”
Consequently, the artistic models or drawings do not have a different protection than the industrial models or designs, like it was the case before, in the Law of Legal Protection of the Industrial Design, it does not mean that they cannot be protected by it, always that they meet the requisites mentioned in it, besides, they can be also protected by the Law of Intellectual Property, when they fit in the definition of artistic, literary or scientific work, of the article 10 of the Law of Intellectual Property.
Now, the question which should be resolved is, what is an industrial (or artistic) design for the purposes of the Law of Legal Protection of the Industrial Design? In order to answer this question, we shall read its first article:
“Article 1. Object of the Law.
1. This law has as object to establish the legal regime of the protection of the industrial property of the design.
2. For the purposes of this law shall be understood by:
a) Design: the appearance of the whole or a part of a product, which is derived from the characteristics of, in particular, the lines, outlines, colors, form, texture or material of the own product or its ornamentation.
b) Product: all industrial or craft article, included, among other things, the pieces destined to be mounted in a complex product, the wrapping, the presentation, the graphic symbols and the typographic characters, with exclusion of the computer programs.
c) Complex product: a product constituted by multiple replaceable components which allow to dismount and to mount again the product.”
Then, what is protected is the appearance of the whole or a part of a product, derived from some of its characteristics, like form, colors or textures.
Nevertheless, we said before that the artistic models or drawings can be also protected as designs, when they meet the requisites mentioned in the Law of Legal Protection of the Industrial Design. These requisites are two, they have to be new and possess a singular character (art. 5). As we are able to see, unlike the patent or utility model, in its case is not demandable the requisite of industrial application, because what is protected is only the appearance of the whole or a part of product.
Now, it is the turn of the topography of semiconductor product which is regulated in the Law 11/1988 of 3 May, of Legal Protection of the topographies of the semiconductor products (Law of Legal Protection of the Topographies of the semiconductor products).
This law says in its article 1:
“Article 1. Definitions.
For the purposes of this Law, shall be understood by:
1. Semiconductor product, the final or intermediate form of any product:
a) constituted by a substratum which includes a layer of semiconductor material,
b) which has one or more supplementary layers of conductive, insulating or semiconductor materials, arranged in function of a predetermined 3-D structure, and
c) destined to play, exclusively or along other functions, an electric function.
2. Topography of a semiconductor product, a series of interconnected images, regardless of the way in which are fixed or codified:
a) Which represent the 3-D structure of the layers which form the semiconductor product.
b) in which each image has the structure or part of the structure of one of the surfaces of the semiconductor product in any of its stages of manufacture.
3. Commercial exploitation, the sale, the renting, the leasing or any other method of commercial distribution, or an offer with such aims.
For the purposes of the above definition, shall not be included the exploitation which is carried out in conditions of confidentiality, always that distribution to third parties does not take place. Nevertheless, the exploitation carried out in conditions of confidentiality shall be included when they are demanded by reasons of security in relation to military applications.”
In other words, what is protected is the “diagram of tracing of the different layers and elements which form an integrated electronic circuit, its 3-D disposition and its interconnections impeding to others its reproduction, sale, or utilization without the consent of the owner.” (excerpt from the website of the Spanish Patent and Trademark Office).
As in the previous cases, in the aforementioned law are also established requisites which shall be met by the topography of a semiconductor product, it has to be “the result of the intellectual effort of its creator and not the ordinary product of the industry of semiconductors” (art. 2).
Article 273.1:
All right, with all the above, at least we can say that, we know, more or less, the rights of industrial property whose infringement punishes the article 273. Reached this point, it is mandatory to study the objective and subjective elements of each of these crimes.
In the first of the points of the article 273, is punished whoever “with industrial or commercial purposes, without consent of the owner of a patent or utility model and with knowledge of its registration, manufactures, imports, possesses, utilizes, offers or introduces in the commerce objects protected by such rights.”
In this case, the legal good protected by the norm is the right of the owner of the patent or utility model to exclusively exploit the result of its inventive activity.
As always that is described a typical behavior in the CP, it is integrated by objective and subjective elements. Let us study first the objective. The actions used by this type are, to manufacture, import, possess, utilize, offer or introduce in the commerce objects protected by such rights of industrial property. The next step is to find the scope of this actions through the help of our dictionary: 1) To manufacture is, “to mass-produce objects, generally by mechanic means.”; 2) To import is, “to introduce in a country merchandise, articles or alien customs”; 3) To possess is, “It said of a person: To have in its power something.”; 4) To use is, “To make that something serves for some aim.”; 5) To offer is, “To compromise to give, make or say something.”, and; 6) To introduce is, “To introduce or make something enter in another thing”, thus, to introduce in the commerce will be, to make something enter into the commerce.
Any of these behaviors, have to be carried out without the consent of the owner of the patent, otherwise, with consent, the behavior would be licit. On the other hand, the subjective elements of the type are two: 1) The typical behaviors must be carried out with commercial or industrial purposes, and; 2) Knowing that the patent or utility model is registered.
At the same time, the first of the subjective elements can be divided in two, for the behavior can have industrial or commercial purposes. There will be industrial intention, when any of the behaviors described has as aim the employment of the object patented or registered as utility model in any kind of industry. On the other hand, the behavior will have a commercial intention, when it is carried out for obtaining a direct or indirect economic benefit of any kind. The demand of a commercial or industrial intention as subjective element of the type, has the direct consequence of transforming this crime against the industrial property, in a crime of tendency or mere activity, whose consummation does not demand the effective industrial exploitation or the obtention of a direct or indirect economic benefit.
Lastly, the typical behaviors have to be carried out knowing the previous register of the patent or utility model used. Undoubtedly, this is going to occur when it is possible to prove during the practice of the proof in the oral trial, that the active subject knew the previous register of the patent or utility model used, as easy as, a previous notarial request through which is required the active subject to stop using the patent or utility model.
Article 273.2:
Let us study the article 273.2, which punishes whoever “in the same way, and for the aims cited, utilizes or offers the utilization of a procedure object of a patent, or possesses, offers, introduces in the commerce, or utilizes the product directly obtained by the procedure patented.”
If you pay attention to the introduction of this article 273, where we have talked about the different rights of industrial property penally protected, we have not talked about patented processes. This is due to the fact, that the Law of Patents does not distinguish between a patentable object or process, indeed, when it talks about “regular patents” it also mentions processes in the same articles. In any case, any patentable process has to meet the same requirements that any other patentable object, it has to be a new invention, imply inventive activity and be susceptible of industrial application.
As in the above cases, the legal good protected by the norm is the right of the owner of the patented process, or its assignee, to exclusively exploit it, as compensation for the investment and effort that its invention has required.
The typical behaviors described in this second point can be divided into two groups: 1) To use or offer the utilization of a process object of a patent, and; 2) To possess, offer or introduce in the commerce, or utilize the product directly obtained by the process patented.
We are not going to explain again the meaning of each of the verbs which form the punishable actions, it is punished both the use or offering of a process object of patent and the possession, offering, introduction into the commerce or utilization of the product directly obtained from a patented process. It continues being important that, these typical behaviors must be carried out without the consent of the owner or assignee of the patented process.
On the other hand, the subjective elements of the crime are the same that we previously saw for the first point. The author of the facts has to commit the crime with a commercial or industrial intention, and knowing its previous register. As we already told, the demand of this commercial or industrial intention transforms it into a crime of tendency or of mere activity.
If we compare this second point of the article 273, with the first of the same article, the doubt may arise of why the legislator has decided to punish this two behaviors and rights of industrial property separately, when they are almost the same. But, if we read with attention both, we see how in the second point is punished something that is not punished in the first, the use of a product directly obtained by a patented process, what justifies in itself the separation.
Article 273.3:
In relation with this third point, we cannot add so much which has not been said yet, for the same behaviors are punished, when the same circumstances concur, but with the particularity that in this case, the industrial property rights protected by this third point are, an industrial or artistic design or a topography of a semiconductor product.
– Article 274:
Let us now see the article 274, which protects three different rights of industrial property, the trademark, the trade name and the protected plant varieties. Let us start reading the article 274:
“Article 274.
1. Shall be punished with the punishment of prison from one to four years and fine from twelve to twenty-four months whoever, with industrial or commercial purposes, without the consent of the owner of the right of industrial property registered according to the legislation of trademarks and with knowledge or the register,
a) manufactures, produces or imports products which incorporate a distinctive sign that is identical or confusable with this, or
b) offers, distributes, or commercializes products wholesale which incorporates a distinctive sign identical or confusable with this, or stores them with this intention, when they are the same or similar products, services or activities for which the right of industrial property is registered.
2. Shall be punished with the punishment of prison from six months to three years whoever, with industrial or commercial purpose, without the consent of the owner of a right of industrial property registered according the legislation of trademarks and with knowledge of the register, offers, distributes or commercializes retail products, or renders services or develops activities which incorporate a distinctive sign or confusable with this, when they are the same or similar products, services or activities for which the right of industrial property is registered.
The same punishment shall be imposed to who reproduces or imitates a distinctive sign identical or confusable with this for its utilization for the commission of the behaviors punished in this article.
3. The occasional or street selling of the products to which is referred the above points shall be punished with the punishment of prison from six months to two years.
Nevertheless, attending to the characteristics of the culprit and the limited amount of the economic benefit obtained or which might have been obtained, always that none of the circumstances of the article 276 concur, the Judge may impose the punishment of fine from one to six months or community service from thirty-one to sixty days.
4. Shall be punished with the punishment of prison from one to three years whoever, with commercial or agricultural purposes, without consent of the owner of the title of plant obtention and knowing its register, produces or reproduces, prepares with production or reproduction purposes, offers in sale, sells or commercializes or in other way, exports or imports, or possesses for any of the aims mentioned, plant material of reproduction or multiplication of a protected plant variety according to the national legislation or of the European Union about plant protection or obtention.
Shall be punished with the same punishment whoever carries out any of the described acts in the above paragraph using, under the denomination of a protected plant variety, plant material of reproduction or multiplication which does not pertain to such variety.”
As we can see, the article 274 can be divided in four points, the first three are dedicated to the rights of industrial property of trademark and trade name, and the fourth and last to the protected plant varieties. The former category can be also divided in three classes, a first point which punishes the selling of products wholesale, a second makes the same with the selling of retail products, and a third which punish the street or occasional selling. Let us study each of these points, but before, a little introduction about what is a trademark and a protected plant variety.
According to the article 4 of the Law 17/2001, of 7 December, of Trademarks (Law of Trademarks):
“Article 4. Concept of trademark.
May constitute trademarks all the signs, especially the words, including the name of persons, the drawings, the letters, the numbers, the colors, the form of the product or its wrapping, or the sounds, on the condition that these signs are appropriated to:
a) distinguish the products or the services of a company from those of another company and
b) be represented in the Trademark Register in a way that allows to the competent authorities and public in general to determine the clear and precise object of the protection granted to its owner.”
Therefore, all trademark is a sign which allows to distinguish the services and products of a company from the products and services of its competitors. Be careful not to mistake trademarks for trade names, which are the signs or denominations which identify a company in the mercantile traffic. Nor either for corporate name, which is the name which that identifies a legal person as subject of legal relations and, therefore, susceptible of rights and obligations. Nor any of them, with the domain, which is a simple internet address, though in the case of conflict with a trademark, legal protection can be obtained in the courts or through an arbitration system established by the World Intellectual Property Organization. And lastly, be careful with the design, either industrial or artistic, which as we already saw, it is an exclusive right granted upon the aesthetic appearance of a product.
On the other hand, a protected plant variety, is a plant variety protected according to the Law 3/2000, of 7 January, of the legal regime of protection of the plant obtainments (Law of protection of the plant obtainments). In its articles 2 and 5 establishes:
“Article 2. Definition of variety.
1. It is understood by variety, for the purposes of this law: a collection of plants of only one botanical taxon of the lowest known rank which, regardless of whether it wholly corresponds with the conditions for the concession of a right of obtainer, may:
a) Be defined by the expression of the resultant features of certain genotype or of certain combination of genotypes.
b) Be distinguished of any other collection of plants by the expression of one of that features at least, and
c) Be considered as a unity, due to its attitude and be propagated without alterations.
2. For the purposes of this Law it is understood as collection of plants the formed by entire plants or part of them, always that these parts are able to generate entire plants.”
And,
“Article 5. Conditions of the variety.
1. The title of vegetal obtainment will be granted when the variety is:
1) New.
2) Different.
3) Homogeneous, and
4) Stable.
2. The granting of the title of plant obtainment cannot depend on supplementary conditions or different than the above mentioned, except when the variety is designed by a denomination according the articles 47, 48 and 49, that the obtainer has fulfilled the formalities established by this law and complementary dispositions and paid the current taxes.”
Article 274.1:
As it is logical, let us start with the first point of the article 274. In it, are punished two different behaviors, one in the letter a) and another in the letter b) of this point of the article 274.
The first of them, letter a), consists in manufacturing, producing or importing products which incorporate a distinctive sign identical or confusable with a trademark or trade name registered according to the legislation of trademarks and without the consent of its owner of assignee.
Let us take a look on the dictionary for seeing the scope of this actions: 1) To manufacture is, “To produce objects wholesale, generally be mechanic means.”; 2) To produce is, “To manufacture, elaborate useful things.”, and; 3) To import is, “To introduce in a country merchandises, articles or foreign customs.”, in this case, the country where the products are introduced is Spain.
Pay attention to the fact, that this first point is limited to products, not talking of services. And besides, it seems to be referred to any type of products, regardless of whether they are identical or similar to the produced, manufactured or imported by the registered trademark.
In the letter b) is punished to offer, distribute or commercialize products wholesale which incorporate a distinctive sign identical or confusable with a trademark or trade name registered and without the consent of the owner or the assignee, or to store them with such aims, when they are the same or similar products, services or activities for which the right of industrial property is registered.
Like before, let us take a look on our dictionary: 1) To offer is, “To compromise oneself to give, make or say something.”; 2) To distribute is, “To deliver merchandise to the sellers and consumers”; 3) To commercialize is, “To sell a product”, and; 4) To store is, “To put or save in the storeroom.” Take into account, that the last behavior can be only punishable when is carried out for carrying out any of the first three.
Unlike the behaviors included in the point a), in this case are included, besides products, the services or activities, but any of them shall be the same or similar to those to which the trademark has been registered, otherwise, the behavior cannot be punished, in other words, the lack of identity or similarity between the products, services or activities which designates the registered trademark and those which designates the trademark identical or similar to the above, determines that the behavior cannot be punished.
We have to take also into account that any of the above behaviors have to be carried out wholesale, what entails to commercialize products in great quantities and to exclude any scenario in which these products are delivered directly to the final consumer. So far so good, but the term “wholesale” is usually employed for referring to the commercialization of products, then what happen with the services or activities? In my opinion, this article will be applicable when the services or activities are offered to a great number of users.
The subjective elements are two, the behaviors of both the point a) and b), should be carried out with commercial or industrial purposes, and knowing that they are registered. Remember that the demand this industrial or commercial purpose transforms this crime into a crime of tendency or mere activity, whose consummation does not require the effective industrial exploitation or the obtainment of the direct or indirect economic benefit.
Article 274.2:
The second point of the article 274 is exclusively referred to the behaviors which suppose the offering, distributing or commercializing of retail products, for which the trademark or trade name is registered, without the consent of its owner or assignee. Thus, is excluded the commercialization of products in little quantities and directly to the final consumer, as well as, the services or activities directed to a limited number of users.
In this case, the objective type of the crime does not include the manufacture, production or importation, therefore, we must understand that these cases, regardless of the number products or users involved, fit in the typical behavior of the first point.
Concerning the subjective elements, are the same that the mentioned in the first point of the article 274. Besides, it is punished a new behavior, to imitate or reproduce a distinctive sign identical or confusable with a trademark or trade name registered, in order to carry out any of the behaviors punished in the first paragraph. We take again or dictionary: 1) To imitate is, “To make or try hard to make something in the same way that another or according the style of another.”. and; 2) To reproduce is, “To obtain a copy of something, as an image, a text or a sound production.”
Concerning the subjective type, this is a malicious behavior, thereby the active subject should know and want to carry out the elements of the type, but besides, it must know that the imitation or reproduction of the trademark or trade name shall have the purpose of being used in the commission of the behaviors established in this article 274. Here we see how the legislator punishes a preparing behavior of what later will be another crime, without being necessary that the active subject in both cases coincides.
Article 274.3:
In the article 274.3 is punished the street or occasional selling of the products to which are referred the previous two points, in other words, of those which incorporate a trademark or trade name identical or confusable with another previously registered, when these are the same or similar to the licitly offered.
According to the Dictionary of Legal Spanish, “street selling” in an, “Commercial activity of retail selling generally carried out in public places without permanent commercial establishment which uses dismantlable, transportable or movable stalls.”
And according to our dictionary, “occasional” is, “that it only happens or acts in some occasions.” Again, we are before a malicious crime, though in this occasion are not required other special elements in the type.
Here the legislator has established the possibility of attenuating the punishment, offering the possibility of eluding the prison, attending to “the characteristics of the culprit and the limited amount of the economic benefit obtained or which might have been obtained, always that none of the circumstances of the article 276 concur.” Nevertheless, the application of this possibility depends on the criterion of the judge or court altogether.
Before continuing with the last point of the article 274, we have to stop for commenting the discrepancies that exist interpreting the objective elements of the type, of the above three crimes. On the one hand, there exists a doctrinal sector of the Spanish courts which has interpreted the article 274, in a way that, it has demanded a new element to the objective type in order to consider the behavior penally reproachable, this is the requisite of the confusability which will take place when a medium consumer may confuse the original products or services with the copied or falsified. This doctrinal sector, justifies itself in an extension of the legal good protected by the norm, for it considers that it is both, the exclusive right of exploitation which corresponds to the owner of the trademark or trade name previously registered, and the right of the consumers to know the origin of the merchandise or service they are buying, in order to guarantee its quality. On the other hand, for others, the correct is to interpret the said by the article 274 in accordance with its wording, without adding elements that the legislator has not taken into account when it wrote it, and without broadly interpreting the legal good protected by the norm. So far so good, everything seems to be normal, even some of you may be already thinking, “well, the problem will end when the Supreme Court adopts one or the other criterion.” As far as I know, the Supreme Court has not its own fixed criterion either, for all the resolutions coming from the inferior courts use some of its sentences for backing their response, although they are all old sentences. Thus, whether a subject is convicted by a court, currently is going to depend in great measure on the quality of the falsifications and the criterion of the court considering or not this requisite as important, something which, in my opinion, is an unacceptable situation for the legal uncertainty that it provokes.
Judge yourselves through the following examples:
Spanish Provincial Court of Malaga´s sentence number 3114/2022: “FIRST.- It is convenient to start remembering, before entering to analyze, in concrete, the allegations of the appellant, that concerning whether it is demandable for the application of the objective type of conviction in this case, this is, the article 274.2 of the Penal Code, that the falsification may induce to error to the possible buyers there exists dissenting opinions in the different Provincial Courts, being possible to cite, as examples, the following resolutions…”
Spanish Provincial Court of Gijon´s sentence number 764/2023: “We are going to discover nothing new if we advance that this court has been always backing the first of the thesis, the one that demanded the concurrence of the confusability among the products for affirming the concurrence of the crime against the industrial property.
With these penal types it is true that before anything is protected the right of the owner to use in exclusive determined signs of identification of industrial products when those have obtained the special guarantee which arise from their inscription in the Industrial Property Register; now, the favoring of the exclusivity has a double basis, on the one hand are protected the interests of the consumers, who, in this way, see favored a better possibilities of guaranteeing the quality wished in the merchandise they acquire, and, on the other hand, are protected the interests of the company which owns the right of industrial property to which is allowed the enjoyment of the corresponding profitability to which aspires through the strict fulfillment of the state regulations which are imposed.”
Spanish Provincial Court of Barcelona´s sentence number 12976/2022: “Besides that, the distinctive sign imitated results, perfectly, confusable, like the penal precept demands, taking into account that, jurisprudence has clarified that for the confusability it is not taken as reference the capacity of deceiving of the buying client, who obviously already represents to itself the falsity of the object which it is acquiring in this type of stores (especially for the price which it pays for them), but for the possibility of confusion for third parties, for the public in general, for the substantial imitation of the distinctive sign, which is what produces the true damage to the trademark.”
Article 274.4:
The last point of the article 274 is dedicated to the protected plant varieties. It is formed by two paragraphs, through which are distinguished two groups of typical behaviors.
Constraining ourselves to the objective elements of the type, in the first it is punished, without consent of the owner, to produce or reproduce, prepare with production or reproduction purposes, offer on sale, sell or commercialize in any way, possess for any of the above aims, plant material of reproduction or multiplication of a protected plant variety.
This time, we are not going to make use of our dictionary for describing the objective elements of the type, since we already know many of the actions which form it.
Regarding the subjective elements of the type, besides being a malicious crime, we have to add two more requisites, these actions must be carried out with a commercial or agricultural purpose and knowing that the protected plant variety has been previously registered. As we have already told many times, the demand of a commercial or agricultural purpose transforms this crime into a crime of tendency or mere activity, whose consummation does not demand the effective agricultural exploitation or the obtainment of a direct or indirect economic benefit.
In the second of the paragraphs of this fourth point of the article 274, it is punished to carry out any of the mentioned acts in the first paragraph with plant material of reproduction or multiplication, under the denomination of a protected plant variety, when in reality this does not pertain to this variety. Obviously, the objective elements of the type consist in carrying out the acts mentioned in the first paragraph of the article 274, using plant material under a denomination which does not coincide with the reality. And the subjective elements of the type, this is a malicious crime, which requires that the active subject must know the falsity of the denomination according to which is selling the plant material of reproduction or multiplication.
– Article 275:
In the article 275, is protected the right of industrial property of the designation of origin and geographical indication. Therefore, the legal good protected by the norm is the right in exclusive of whom commercialize such products, to continue making it without non-authorized third parties selling products of less quality under the same designation of origin or geographical indication.
Before commenting the article 275, let us see where are regulated, with general character, the designation of origin and the geographical indications. They are regulated in the Regulation (EC) Nº 1151/2012 of the European Parliament and of the Council of 21 November 2012 about the regime of the agricultural and alimentary products (Regulation (EC) Nº 1151/2012), which as we already know, is of direct application in all the member States, without needing their transposition through an internal norm (art. 288 of the Treaty on the Functioning of the European Union. Notwithstanding, we have to take into account, the ambit of application of the Regulation, which expressly excludes from its scope, the spirit drinks, the aromatized wines and the grapevine products, with the exception of the wine vinegar (art. 2 of the Regulation (EC) Nº 1151/2012). In its article 5, are defined the designations of origin and the geographical indications:
“Requisites for the designations of origin and the geographical indications:
1. For the purposes of the present Regulation, it shall be understood by “designation of origin” a name that identifies a product:
a) from a determined place, region or, exceptionally, a country;
b) whose quality or characteristics are due mainly or exclusively to a particular place, with the natural and human factors inherent to it, and
c) whose phases of production takes place in their totality in the defined geographical ambit.
2. For the purposes of the present Regulation, it shall be understood by “geographical indication” a name that identifies a product:
a) from determined place, region or country,
b) which possess determined quality, a reputation or another characteristic which can be essentially attributed to its geographic origin, and
c) whose phases of production, at least take place within the defined geographic limits.
3. Despite the established in the point 1, some names shall be assimilated to the designation of origin even when the raw materials that are used for the product come from a geographical area broader than the geographical area defined or a different area than this. Always that:
a) the area of production of the raw material is delimited;
b) there exist specific conditions for producing the raw materials;
c) are applied measures of control for guaranteeing the fulfilment of the conditions mentioned in the letter b), and
d) the designations of origin in question are recognized as designations of origin in the country of origin before the 1 May 2004.
For the purposes of the present point shall be only considered raw materials the alive animals, the meat and the milk.
4. With the object of taking into account the specific character of the production of products of animal origin, the Commission shall be endowed with the faculty of adopting acts granted according to the article 56, relative to restraints and exceptions regarding the origin of fodder in the case of the designations of origin.
Besides, with the object of taking into account the specific character of determined products or areas, the Commission shall be endowed with the faculty of adopting delegated acts, according the article 56, relative to restraints and exceptions regarding the slaughtering of alive animals or the origin of the raw materials.
This restraints and exceptions shall take into account, on the basis of objective criterions, the quality, the use, the recognized practical knowledges or the natural factors.”
At national level, we also have the Royal Decree 1335/2011 of 3 October, by which is regulated the procedure for processing the requests of inscription of the protected designations of origin and the protected geographical indications in the Community Register and the opposition to them.
Let us now study the article 275, which says:
“Article 275.
The same punishments than the established in the previous article shall be imposed to those who intentionally and without being authorized to that, use in the economic traffic a designation of origin or a geographical indication representing determined quality and legally protected for distinguishing the products protected by them, and knowing this protection.”
As we see, in this case the objective type is constituted by the use in the economic traffic of a designation of origin or geographical indication, without being authorized to that. For economic traffic we can understand, “the collection of activities of production and commercialization of goods and services in the market”.
Regarding the subjective elements of the type, we are again before a malicious crime, which requires the knowledge of such protection.
– Article 276:
In the article 276 we find an aggravated subtype of all the crimes previously commented, applicable when any of its circumstances are met by them.
“Article 276.
Shall be imposed the punishment of imprisonment from two to six years, fine from eighteen to thirty-six months and special disqualification for exercising the profession related with the crime committed, for a period from two to five years, when any of the following circumstances concur:
a) That the benefit obtained or which might be obtained possesses special economic transcendence.
b) That the facts have special gravity, attending to the value of the objects illicitly produced, distributed, commercialized or offered, or the special importance of the damaged occasioned.
c) That the culprit pertains to an organization or association, included of transitory character, which has as aim the commission of infringing activities of the rights of industrial property.
d) That are used minors under eighteen years of age for committing these crimes.”
– Article 277:
The article 277 says:
“Article 277.
Shall be punished with the punishments of prison from six months to two years and fine from six to twenty-four months, whoever intentionally has spread the invention object of a request of secret patent, contravening the established in the legislation of patents, always that it damages the national defense.”
The Title XI of the Law of Patents is entitled “Patents of interests for the national defense”, this is the title to which the article 277 refers, when it said “contravening the established in the legislation of patents.” Let us see some of its more important aspects:
– The content of all the requests for patents shall be maintained in secret until a month has passes since the date of their presentation. Before its end, the Spanish Patent and Trademark Office shall extend this period until fourth months when it considers that the patent may be of interest for the national defense (art. 111.1 Law of Patents).
– In order to determine when a patent may be of interest for the national defense, the Ministry of Defense and the Spanish Patent and Trademark Office shall be coordinated, to achieve this, the Ministry of Defense may know under regime of secret of the requests presented (art. 111.2 Law of Patents).
– When the Ministry of Defense considers that a patent is of interests for the national defense, before the period of four months has ended, shall require the Spanish Patent and Trademark Office its secret processing and the corresponding notification to the requester (art. 111.3 Law of Patents).
– While the request of patent or the patent are subject to the regime of secret the requester or the owner shall abstain of any action which may allow the knowledge of the invention by non-authorized third parties (art. 111.4 Law of Patents).
– The patent whose concession has been processed in secret will be inscribed in the Secret Registry of the Spanish Patent and Trademark Office, and shall be in this regime during a year since the date of its concession. The extension of this period shall be annually renewed, being notified the owner of the patent (art. 113 of the Law of Patents).
– The owner of the patent shall be able to claim a compensation to the State for the period it was kept in secret. This compensation, which can be claimed for each year, shall be agreed between the parties. If an agreement is not reached, the compensation will be judicially set, taking into account the importance of the invention and the benefit which the owner might have obtained from the free exploitation of it (art. 114.2 Law of Patents).
Now, we are able to understand better this article 277. Then, the objective element of the type is, the spread of the invention which has is a secret patent or is in the process of being one. And the subjective elements, we are before a malicious crime, like the own article 277 underlines when it says “intentionally”.
Víctor López Camacho.
Twitter: @victorsuperlope.
More on my website: www.victorlopezcamacho.com