Criminal proceedings and customs searches
This trade fair (the International Trade Fair for Sanitary Wares—ISH) is not only known for its importance to the business sector concerned; it also happens to be a place where criminal prosecutors and customs officials take probes and detain lots of goods on the grounds of suspicion that an IP right (primarily a patent or design right) is infringed. This is a good opportunity to turn briefly to criminal prosecution and the activities of the customs authorities apart from border controls.
In Germany and all other European countries, IP infringements regularly are also criminal offences. In addition, German law treats patent or design infringements as criminal offences against customs laws if these products have been brought into Germany under violation of existing laws. That is advantageous to IP owners because they can ask customs authorities (Customs Investigation, Mobile Customs Police) to investigate such criminal offences in relation to, for example, trade fairs.
That has recently led to some very successful customs ‘campaigns’, such as at the ISH in Frankfurt am Main in March 2011, where an entire hall was ‘scanned’ by officers, IP owners and lawyers for design and patent infringements, and other fairs such as the Ambiente and Paper World fairs. All ‘suspicious’ products were taken away from the stands as part of investigations of customs law offences. They were stored somewhere else and could not be shown anymore at the trade fair.
Business people from all over the world looked as customs took away seemingly infringing products. Many immediately reacted and went back to their booths in order to put away all those products they thought might be ‘dangerous’. From an IP owners’ viewpoint this is very effective and serves as a deterrent against future infringements. The 2011 activities largely repeated what happened before in 2009 and 2007.
The criminal investigations following such ‘searches’ will regularly be closed at an early stage because of a lack of interest in prosecuting or an absence of the ‘infringers’. But that may not be important—the ‘psychological effect’ is what counts.
“German law treats patent or design infringements as criminal offences against customs laws if these products have been brought into Germany under violation of existing laws.”
However, normal criminal prosecution, at least from the German point of view, does not play an important part in the enforcement of IP rights. Trademark infringements discovered through border controls may form an exception, as prosecutors may see this as the classic field of ‘product piracy’. But even in this situation, criminal prosecution of trademark infringers only ends in a criminal trial if the amount and value of the goods detained is high enough to merit a trial, and that is not very often the case. In patent and design cases, it is quite difficult to prove that infringers acted intentionally to infringe.
The reluctance of IP owners to initiate criminal proceedings is understandable for other reasons as well. The main goals of IP enforcement cannot be achieved with criminal prosecution. Further, most proceedings do not even generate more information on the infringement. Apart from the fact that in Europe there are or will be effective civil remedies available in order to obtain information, prosecutors—at least in Germany—are reluctant to even investigate IP rights infringements.
In Germany, criminal offences relating to IP infringement are subject to private prosecution. That means that the ‘infringed person’ himself has to criminally prosecute the infringer and a public prosecutor only takes over the investigation if there is a public interest to prosecute. At least in patent and design cases, that is not very often. It may be different in trademark cases, although the recorded trials even in this field are rare.
Apart from these legal ‘hurdles’, patent infringements are sometimes quite complicated to understand for lawyers—like public prosecutors—who are not concerned with such technical facts every day. However, criminal proceedings may exert additional pressure on the infringer for achieving an out-of-court solution while a civil action is underway.
Especially in patent cases, these proceedings may only be useful if there is already a civil court judgment that can be relied upon, and in cases of continued, presumably intentional, infringement of one or more patents.
Jens Künzel, LLM, is a partner at Krieger Mes & Graf v. der Groeben. He can be contacted at: jens.kuenzel@krieger-mes.de.
