How can I protect my products from counterfeiting?

16 April, 2024
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Intellectual property
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Lucas Charnet


You’ve probably strolled along the beach promenade during summer and spotted street vendors, also known as ‘top manta,’ offering counterfeit high-end products at irresistible prices for most, barely distinguishable from the authentic ones. What used to be limited to these street vendors has now expanded to the vast ocean of the internet and its online selling platforms. Consequently, the current market faces an increasingly significant challenge: the proliferation of counterfeits affecting both major brands and independent creators. Is it really feasible to protect our products against these imitations? What legal avenues do we have? In this article, we will explore these questions in detail.

Traditionally, trademark law has been the legal branch responsible for protecting the identity of a company’s services or products. We recall cases such as the loss of the Big Mac trademark rights by the fast-food chain McDonald’s, or the famous disputes between Coca-Cola and Pepsi Cola for dominance in the soft drink market. However, in both cases, companies could only protect their interests through their brand identity, without the capacity to act against similar products attempting to replicate a successful commercial and product model almost identically.

As we have mentioned in other articles on this blog, ideas themselves cannot be protected, as they must be embodied in a tangible medium. Therefore, the mere idea of a product or business cannot be subject to protection. Similarly, a product, unless it constitutes an invention protectable by a patent or utility model, cannot be legally protected. However, the question arises: what happens when a product exhibits a sufficient degree of originality to be considered an artistic work?

The Fake Bags of Desigual

A recent case that has resonated in the legal sphere is the Supreme Court judgment that condemned an entrepreneur to pay more than €155,000 for selling bags that plagiarized the designs of the renowned brand Desigual.

During an inspection at his establishment, located in the La Cova de Manises industrial estate, the police found 3,746 bags that imitated the original designs, causing economic harm to the company ABASIC, holder of the intellectual property rights of Desigual’s original artistic creations.

Although the case may seem similar to the typical imitation of products, such as football club jerseys reproducing shields and logos, in this case, the illicit act is not the product itself but the incorporation of Desigual’s original designs. These designs, it is worth noting, were previously registered in the Intellectual Property Registry.

Therefore, in this judgment, the Supreme Court considers whether the incorporation of these designs, considered plastic works, into the products constitutes conduct that can be framed within the offense against intellectual property (Article 270 of the Spanish Penal Code), or if, on the contrary, such conduct cannot be classified according to that provision.

In its judgment, the Supreme Court considers first that the designs were “artistic works that met all the conditions required for the penal protection of intellectual creativity, having in their favour the corresponding registration in the Intellectual Property Registry,” and that, therefore, from that moment on, it protected the creator against unauthorized uses of the designs.

Although Article 10.1 of the Spsanish Intellectual Property Law does not establish a garment as a work, all original creations, literary, artistic, or scientific, expressed by any means or support, tangible or intangible, currently known or to be invented in the future, are subject to intellectual property. This includes sculptures and works of painting, drawing, engraving, lithography, graphic stories, comics, as well as their essays or sketches, and other plastic works, whether applied or not.

Therefore, the unauthorized commercialization of a plastic work would be included in the scope of protection that Article 270 of the Penal Code grants to the creator of any artistic work.

Second, although some Provincial Courts have argued that a work, when applied to a product for commercialization, “loses its individuality,” and, therefore, its reproduction by an unauthorized third party would not fall within the scope of protection of Article 270, the Court considers this interpretation to be totally erroneous and in direct conflict with what is established in Article 270 of the Penal Code.

The Court rules that the Desigual signature prints attached to the bags distributed by the accused went far beyond simple objects intended for practical purposes and limited in their design to generate a considerable aesthetic visual effect. The Court considers that they were, on the contrary, artistic works that met all the necessary conditions for the penal protection of intellectual creativity, backed by the corresponding registration in the Intellectual Property Registry. And although it is evident that the counterfeits had some modifications regarding colour and size, the degree of similarities determines them to be a copy of the registered design.

Conclusion

In summary, the Desigual case stands out especially for having previously registered its designs in the Intellectual Property Registry. As we have discussed in other articles on this blog, this registry, although voluntary, provides additional protection to the holder of the work. This measure can make the difference between the protection of our products and their unauthorized exploitation by third parties.

The registry provides tangible proof of the existence and ownership of rights over a work or creation, facilitating legal defense in case of disputes. Additionally, it grants a presumption in favour of the rights holder, reinforcing their position in any legal conflict. In short, the intellectual property registry is a powerful tool to strengthen your rights and defend your work against possible infringements.

At MES Advocats, we offer comprehensive advice and support in the process of registering and managing your products and identifying elements of your business, providing personalized and efficient service to our clients. If you need more information or are interested in obtaining a quote, do not hesitate to contact us through this link.

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