Defence Against an Accusation of Complicity in Counterfeiting
Ing. Ines Sangiacomo describes a recent case relating to the assessment of counterfeit goods. For reasons of sensitivity, the true name of the Biesse client has been omitted.
Case summary
The lawyers of Mr ROSSI (fictitious name to protect the anonymity of the Biesse client) requested technical assistance from BIESSE in defending their client, from whom goods had been seized comprising shirts and tops bearing well-known marks such as BURBERRY, FRED PERRY, and MONCLER.
Scope of the advisory services:
To prepare a technical expert opinion in response to the Judge's question, which requested an analysis of the seized goods and an opinion on whether the goods were counterfeit and, if so, on the level of counterfeiting, indicating the indicators of authenticity or counterfeiting identified.
Advisory services provided:
Ing. Sangiacomo analysed the allegedly counterfeit items, compared them with genuine items to establish whether counterfeiting had occurred and, if so, how evident such counterfeiting would be to a relatively expert examiner, such as a retailer.
Results achieved:
Ing. Sangiacomo provided technical assistance to the lawyers in defending their client, who was subsequently acquitted of the charge of complicity in counterfeiting.
Ing. Ines Sangiacomo
CASE DETAILS: DEFENCE AGAINST AN ACCUSATION OF COMPLICITY IN COUNTERFEITING
The question:
Mr MARIO ROSSI (fictitious name) has worked for many years in the cashmere garment trade. To round out the range of products sold, he decided to purchase from a well-known clothing shop a stock of shirts and tops bearing well-known apparel marks.
On 20 April 2010, the Guardia di Finanza seized the said goods from Mr Rossi, believing them to be counterfeit, and investigated him for the offence under Art. 474 of the Italian Criminal Code for having, for profit, offered for sale tops with counterfeit marks.
Art. 474 of the Criminal Code provides that: "Outside the cases of complicity in the offences provided for in Article 473, anyone who introduces into Italian territory, for profit, industrial goods bearing national or foreign marks or other distinctive signs that are counterfeited or altered, shall be punished with imprisonment from one to four years and with a fine from EUR 3,500 to EUR 35,000. Outside the cases of complicity in counterfeiting, alteration, or introduction into Italian territory, anyone who holds for sale, offers for sale, or otherwise puts into circulation, for profit, the goods referred to in the first paragraph shall be punished with imprisonment of up to two years and a fine of up to EUR 20,000. The offences provided for in the first and second paragraphs shall be punishable on condition that the provisions of domestic laws, Community regulations, and international conventions on the protection of intellectual or industrial property rights have been observed."
Mr ROSSI's lawyers therefore requested BIESSE's technical assistance in defending their client in order to establish whether the seized goods were actually counterfeit and the extent of any counterfeiting.
Advisory services provided:
Under established law and case law, complicity in counterfeiting requires the defendant to have been actually aware of selling counterfeit goods.
A technical expert opinion was therefore requested to establish whether counterfeiting had occurred and, where the counterfeit nature of certain items was affirmed by a party expert, whether the elements used to establish counterfeiting were evident or detectable only by a particularly expert examiner.
For a thorough analysis, the seized items were compared with equivalent genuine items.
For all items examined, the comparison showed that the fabrics, cut, buttons, stitching, application of decorative motifs, labels, and tags were identical to those of the genuine items.
For some seized products, the examination did not reveal elements confirming their counterfeit nature; on the contrary, it supported their authenticity. For other seized products, the party expert had established their counterfeit nature from security indicators inserted by the manufacturers. However, these security indicators were difficult to identify, not being visible from the outside.
These are the measures adopted by manufacturers precisely to distinguish genuine products from counterfeits; however, such measures are not normally known to ordinary consumers or retailers.
For these reasons, Ing. Sangiacomo concluded that it was unlikely that the defendant would have found on the seized items any elements giving rise to awareness of their counterfeit nature and that, on the contrary, there were numerous factual elements capable of misleading the non-expert, who, in light of the high quality of the goods, the apparent identity of the marks applied compared to the originals, and the packaging, had incorrectly formed the belief of their authenticity. This belief was reinforced by the circumstance that the allegedly counterfeit items had been purchased in bulk, with a regular invoice, from a well-known clothing shop acting as an official dealer of the marks in question, at a non-negligible price.
