Counterfeiting fine proportionality: EU Judgment in Case C-655/21 G. ST. T.

Thursday 19th October 2023

Judgment in Case C-655/21 G.ST. T. (Proportionality of fine in case of counterfeiting)

(Intellectual property)

G. ST. T. is the owner of a sole proprietorship engaged in the sale of clothing. In 2016, officers of the Bulgarian Ministry of the Interior carried out an inspection in a commercial premises rented by that company in the municipality of Nesebar (Bulgaria) and seized goods offered for sale there. The court-ordered expert report showed that the signs affixed to those goods were similar to registered trademarks and estimated the total value of those goods at BGN 1,404,590 (approximately € 718,000) ‘as originals’ and BGN 80,201 (approximately € 41,000) ‘as imitations’.

The Burgas District Prosecutor’s Office found that G. ST. T. had thus, without the consent of the proprietors of the exclusive rights, made use of trademarks n the course of trade, which were the subject of those exclusive rights and that that activity had caused ‘significant harmful consequences’, with the result that the person concerned was referred to the District Court of Nesebar, on a charge of aggravated infringement under Article 172b(2) of the Criminal Code.

None of the injured legal persons have brought a claim for damages against G. ST. T. or brought a civil action in the proceedings. The national court states, in substance, that, in the context of the option available to the Member States, in accordance with recital 28 in the preamble to Directive 2004/48, to provide for criminal penalties in the event of infringement of intellectual property rights, the Republic of Bulgaria has introduced Article 172b(1) and (2) of the Criminal Code.

The referring court asks whether legislation and case-law, under which the damage suffered by the rights holder is one of the constituent elements of the criminal offences, comply with the rules on damage caused by the unlawful exercise of intellectual property rights introduced by Directive 2004/48.

Background Documents C-655/21