TUESDAY, 1 JULY 2008
Free from fakes fencing
On 30 June 2008, the Polish Supreme Court (PSC), the Criminal Law Chamber sitting in extended bench of seven Justices, answered the question whether the Polish legislator's intent was to leave acts of purchasing counterfeit goods with impunity or should such deeds be deemed as fencing according to articles 291 and 292 of the Polish Penal Code.
This case concerned Malgorzata N. ((publication of full personal data is not allowed in Polish criminal procedure unless otherwise decided by a court) who was accused by the prosecutor of helping to sell clothes which were unlawfully bearing Everlast, Adidas, Puma and Nike registered trade marks. Charges were based on the article 291 of the Polish Penal Code (PPC) which says:
"1. Whoever acquires property obtained by means of a prohibited act, or assists in its disposition, or receives such property or assists in the concealment thereof shall be subject to the penalty of deprivation of liberty for a term of between 3 months and 5 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 court of the first instance (sad rejonowy) has ruled that Malgorzata N. was guilty of buying contested clothes in unfound place and time, and at the same time knowing that those products unlawfully bore registered trade marks. The Court sentenced the defendant for 50 daily rates of fine, each worth 40 PLN.
Malgorzata N. appealed. Her attorney argued that the court of the first instance erred in the interpretation of article 291 of PPC which should be only applied in a case of the first purchase as it was decided by the Supreme Court in the judgment of 24 May 2005, act signature I KZP 13/05, regarding the issue of "introducing to market" and the interpretation of article 305(1) of the Polish Act on Industrial Property Law (IPL - before amendments of 2007):
"Anyone marking goods with a counterfeit trademark for the purpose of introducing them on the market or introducing on the market goods bearing such trademark, shall be liable to a fine, limitation of freedom or imprisonment for a period of up to two years."
The Supreme Court defined the term "introduction to market" as a passing on of goods labelled with a fake trade mark for the first time by a producer or importer of those goods. A subsequent sale of such a product should not therefore be recognized as "introduction to market" and could not therefore be the subject of criminal proceedings. According to defendant's attorney the PSC's interpretation excluded Malgorzata N.'s guilt because further turnover of such goods was beyond the scope of penalisation.
Article 305(1) was amended of 31 July 2007 to adjust its provisions to every situation of "market turnover":
"Anyone marking goods with a counterfeit trade mark, registered trade mark for which one does not have the right to use, for the purpose of introducing them on the market or anyone who is making a turnover of goods bearing such trade mark, shall be liable to a fine, limitation of freedom or imprisonment for a period of up to two years."
The PSC hold that any behaviour which is not understood as "introduction to market" as defined in article 305(1) of the IPL (after amendments from 2007) and consisting of further market turnouver of goods bearing counterfeited trade marks is not a misdemeanour defined by article 291 and 292 of the PPC because it does not fulfil a trait of "property obtained by means of a prohibited act".
Judgment of the Polish Supreme Court, act signature I KZP 8/08 of 30 June 2008 (the text of this judgment is provided in PDF file, in Polish language).
Previous articles by Class46 regarding the issue of "fencing" in Polish law:
Poland: are they fencing?
Posted by: Tomasz Rychlicki @ 12.00
Tags: Counterfeiting, Poland, trade mark counterfeit,