by Rodrigo Borges Carneiro
January 26, 2004
Importers of counterfeited auto radios bearing the well-known trademark "ROADSTAR" were convicted for the crime of trademark infringement, with the aggravated circumstance of infringement of a well-known mark by the Special Criminal Court of the city of Maringá – state of Paraná in the southern region of Brazil, in a decision published on December 02, 2003 (criminal action n° 036/2003).
The auto radios were imported through the port of Paranaguá in the State of Paraná, and initially entered the Brazilian territory without problems, but were later seized by authorities during a random inspection in the city of Maringá, to where the goods were transported by truck.
The authorities initially decided to inspect the cargo to investigate a possible tax irregularity. During the inspection, a suspicion of counterfeiting activity led them to confirm the existence of registrations for the mark "ROADSTAR" before the Brazilian Patent and Trademark Office online database. The inspector contacted the attorneys of record who called their client, Roadstar Management S.A. Roadstar Management then sent an employee to Brazil who confirmed the infringement before the authorities.
As a result, a criminal action was filed against the partners of the Brazilian company Ocean Comercial Importadora Ltda to definitely seize the products and convict the partners for the crime of trademark infringement. It is important to bear in mind that customs authorities in Brazil will only hold counterfeited products on a temporary basis for ten days while waiting a court order to determine the final seizure of the goods and therefore a coordinated and swift action is required in these circunmstances.
During the criminal action the accused alleged that they were only acting on behalf of a Brazilian company named Sodico Importação e Comércio de Produtos Eletrônicos Ltda, which in turn represents the Paraguayan company Colisee Sociedad de Responsabilidad Ltda. Moreover they claimed that the final destination of the products was Paraguay. Also, they asserted that Colisee is the owner of trademark registrations for the mark "ROADSTAR" in Paraguay.
However, Roadstar Management was able to prove that the products were indeed destined for commercialization in Brazil since Colisee Sociedad de Responsabilidad had advertised the commercialization in a web site located at www.roadstar.com.br. An injunction was obtained in a related civil court action to temporarily suspend the web site.
The criminal court held that the effects of the terms of an agreement between Ocean Comercial Importadora with Sodico Importação e Comércio de Produtos Eletrônicos, which had a clause excluding the liability of Ocean Comercial Importadora, were limited to the civil sphere and thus insufficient to exclude criminal liability for the partners of Ocean Comercial Importadora.
The finding that the mark "ROADSTAR" is well known caused the criminal court to convict the accused for the crime of trademark infringement with the aggravated circumstance of infringing a well-known mark. The partners were fined approximately tree hundred dollars each. They were also included in the roll of convicted persons, and as such will no longer be eligible to benefits in the case of further criminal actions. The decision is still subject to appeal to the higher courts.