How the amendments to the Spanish Criminal Code affects IP rights
Spanish Criminal Code has been amended by Organic Act 1/2015, 30 March that entered into force on July 2015. The amendments affect IP crimes directly, by means of modifying the type of the criminal offence and its consequences, and indirectly, by means of clarifying the liabilities allocated to the legal person (the company).
Concerning patent rights, utility models, industrial designs or topographies of semiconductor products, the types of the criminal offence have not been changed. However the Criminal Code includes now new behaviours concerning copyrights and trademarks. In particular we make reference to the following ones:
- Copyrights: to facilitate (actively and not neutral and without a limitation to a technical treatment) access or the localisation on Internet to works protected by copyrights without authorisation, in particular, offering listed links to works and to their contents; to facilitate to third parties the access to a copy of a literary, artistic or scientific work, or its transformation, interpretation or artistic performance, contained in any type of form or to communicate it by any means, by surrounding or providing means to surround technological measures aims to avoid it; to manufacture, import or put into circulation or to possess with a commercial aim any means aimed to provide the not authorised suppression or neutralisation of any technical device that has been used to protect computer programs or any work;
- Trademarks: to provide services or to develop activities incorporating an identical or confusing registered trademark; the street vending of infringing products.
Some penalties concerning specific behaviours have been increased in relation to copyrights and trademarks. But there is an overall increase of penalties that affects also patent, utility models, industrial designs and topographies of semiconductor products. In this sense, penalties of imprisonment increased from 1 to 4 to 4 to 6 years, the economic penalty from 12 to 24 to 18 to 36 months and the disqualification to exercise the profession in relation to the criminal offence is maintained for a period from 2 to 5 years, when the following circumstances are fulfilled: a) when the profit obtained is of special economic importance; b) when the events are especially serious, in view of the value of the objects unlawfully produced or the special importance of the damage caused; c) when the offender belongs to an organisation or assembly, even if transitory in nature, whose purpose is to perpetrate activities that infringe industrial property rights; d) when persons under eighteen years of age are used to commit those offences.
In addition, it is important to make also reference to the amendments concerning the direct liability of the legal person (the company or institution), because it affects indirectly the liability in cases of criminal offenses concerning infringement of IP rights.
In this sense, whoever acts as director of a legal person, or on behalf or in legal or voluntary representation of another, shall be held personally liable, even though he does not fulfil the conditions that the relevant criminal offence requires to be an active subject thereof, if such circumstances concur in the entity or person in whose name or on behalf of whom he so acts.
Legal entities shall be criminally liable in the following circumstances: a) for the offences committed in their name or in their behalf, and for their profit, by their legal representatives or for those who are authorised for taking decisions in the name of the company or have power of organisation and control inside the company; b) for the offences committed in the exercise of their corporate activity and in their name or in their behalf by those that although they are under the authority of the persons mentioned before they carry out the forbidden behaviour because the duties of oversight, monitoring and control have been heavily infringed.
However, the company will not be liable if it follows a Compliance Management System that is expressly described in article 31 bis of the Criminal Code.
Besides personal liabilities mentioned before, the company could be condemned with the following penalties imposed thereon for criminal offences concerning IP rights: a) a fine of two to four times the profit obtained, if the offence committed by a natural person has a punishment of imprisonment foreseen exceeding two years; b) a fine of two to three times the profit obtained, in the rest of the cases.