by Rodrigo Borges Carneiro
January 27, 2005
The Criminal Panel of Appeals of the State of Paraná has confirmed the criminal convictions of the partners of a company that imported counterfeit car radios bearing the well-known trademark ROADSTAR. (Appeal 2004.001216-0, published December 6 2004).
As reported in the February 9 2004 edition of World Trademark Law Report (Counterfeit car radio importers hit a ROADSTAR block) the facts of the case are that during a tax fraud investigation, the Brazilian customs authorities discovered a cargo of car radios bearing the mark ROADSTAR in the possession of an importer called Ocean Comercial Importadora Ltda. The authorities seized the products on suspicion of counterfeiting and contacted the owner in Brazil of the mark ROADSTAR – Switzerland-based Roadstar Management SA. Within the 10-day limit of customs’ temporary seizure, Roadstar confirmed that the car radios were counterfeits and filed a criminal action against the owners of Ocean to obtain (i) a permanent injunction of seizure, and (ii) a conviction on the grounds of trademark infringement.
In response, Ocean’s owners alleged, among other things, that they were not responsible as they were acting on behalf of another Brazilian company (Sodico Importação e Comércio de Produtos Eletrônicos Ltda), which in turn represented Paraguayan company Colisee Sociedad de Responsabilidad Ltda. These arguments were dismissed at first instance and the court upheld Roadstar’s claim. Ocean’s owners appealed.
The Criminal Panel of Appeals dismissed the appeal and in doing so clarified some controversial points of law in this area.
It first held that the term of 30 days within which a criminal complaint must be filed begins from the date the judge issues a notice of ratification of the expert opinion confirming that a crime has been committed. There has been some controversy on this point as a result of some authorities suggesting that the term starts automatically from the ratification itself as opposed to the notice of ratification.
The panel next clarified that a party importing counterfeit products into Brazil is criminally liable, notwithstanding the existence of agreements with a third party excluding the importer’s liability and stipulating that the importation was effected on behalf of the third party. The panel noted that criminal statute provides that the act of importing infringing products is a criminal offence. In the case at hand, the evidence showed that Ocean’s owners had committed this offence.
Finally, the infringers claimed that they had no intent to import infringing goods, meaning that no crime had occurred. However, the panel decided that because of the reputation of the ROADSTAR mark intent should be automatically presumed.
The decision is subject to an appeal.