Trademark Counterfeiting - Who’s Fooling Who?

A Federal Court of First Instance acquitted the defendant on charges of sale of counterfeit trademarked goods (Law No. 22,362, Section 31.d). In so deciding, the Court held that the circumstances of the case (street sale of ostensibly counterfeit products in small quantities) excluded the possibility of consumer deception and thus meant no harm to the trademark holder. Section I of the Federal Criminal Court of Appeals upheld the acquittal.

The acting Federal Prosecutor challenged the ruling before the Federal Criminal Court of Cassation, on the grounds that the potential for consumer deception is not a requisite element of the crime in question.

Section III of the Federal Criminal Court of Cassation handed down a unanimous decision and reversed the ruling, albeit with concurring opinions.

The majority held that the acquittal was groundless as the acting Judge failed to demonstrate that the products in question were indeed unlikely to deceive potential purchasers, or that the defendant´s actions failed to harm the trademark holder. Thus, the case was remanded for further proceedings.

The minority decision reversed the ruling on the grounds that the Trademark Law protects both the consumer and the rights holder, meaning that the prosecution need not show the potential for consumer deceit to secure a conviction on trademark counterfeiting charges.

While acquittals in this type of cases were handed down with little or no investigation, this decision will hold Criminal Courts to a higher evidentiary standard.

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		Gustavo P. Giay
		Andrés O’Farrell