The case: Having devised an ingenious concept, the accused and his brother, who lives in Turkey and is subject to separate legal action, distributed counterfeits of clothing to intermediaries via a Berlin-based company. The clothes displayed the logos and Union trademarks of various brand manufacturers but in order not to attract attention, these brands were hidden by labels applied over the top of the brand logo. For example, the HUGO BOSS brand logo was covered with the name ‘Mio Calvino’ on counterfeit shirts.
The distribution to the distributors was facilitated via an internet platform. After the distributors had ordered and paid for the garments online, the items were made or procured in Turkey.
In most cases, the garments arrived at various and sometimes fictitious addresses in Berlin via intermediate stops in Poland and Great Britain. However, in one case, counterfeit HUGO BOSS shirts were sent by air freight from Istanbul to Berlin, where, at Tegel airport, they were intercepted by customs authorities and the scheme was exposed. In the defendant’s Berlin warehouse, counterfeit garments with a value of more than €260,000 were seized.
The accused was sentenced to a total term of three years and nine months for commercial infringement of EU trade marks by the prohibited import of branded clothing in three cases, as well as forgery of documents. Furthermore, an order was made for the confiscation of his proceeds and the other objects obtained as a result of the offence.
The fact that the brand’s trade marks had been covered up on the garments and thus made invisible during importation did not change any aspect of the trade mark infringement. A court in Germany had already ruled that smuggling branded goods into the European Economic Area did not constitute a criminal import ‘under the trade mark’. However, the Federal Supreme Court held that the prohibition on importing branded goods into the European Economic Area without the consent of the trade mark owner includes a concealed import. In the case of unauthorised importation, even if it is covert, the trade mark is still being used against the will of the trade mark proprietor. When the goods arrive in the European Economic Area, the import has already been completed and the trade mark has been used. The fact that the goods have been confiscated by customs at the border does not alter this.
For the accused, the crime was considered aggravated by the commercial nature of his trade. By repeatedly committing the offence, he had aimed to obtain a continuous source of income of some, not necessarily unlimited, duration.
Covering up the Hugo Boss trademark with the name ‘Mio Calvino’ was considered a criminal forgery of documents, resulting in a total prison sentence of three years and nine months, Federal Court of Justice, 23 January 2018, 5 StR 554/17.
Learnings: When importing trade-marked goods into the European Economic Area, make sure that the consent of the trade mark owner has been obtained. The purpose of the trade mark is, in particular, to guarantee the origin of the goods to consumers. Anyone who interferes with this function of the trade mark without the consent of the trade mark proprietor by using the trade mark without their consent by importing goods infringes the trade mark and is liable to prosecution.