Article 305 of the Polish Industrial Property Law establishes the fundamental principle of criminal liability for the trade in goods bearing counterfeit trademarks. This provision underwent significant amendments in 2007, with the term 'marketing' being replaced by 'trading in'. This change was prompted by interpretation uncertainties and a Supreme Court resolution in the I KZP 13/05 case, which indicated that only the initial act of introducing goods to the market would be subject to criminal prosecution, with any subsequent trading in these goods not being within the scope of penalisation.
Despite the passage of 17 years since the above-mentioned legislative change, the scope of criminalisation of acts under Article 305 of the IPL remains a subject of doctrinal considerations. Recently, there was an extensive article by Piotr Żak, PhD, 'Criminal liability for the purchase of goods bearing a counterfeited trademark - remarks in the aspect of systemic approach to "trading" (publ. The linguistic, systemic and intentional interpretation led the author to conclude that 'trading, as referred to in Article 305, Section 1 of the IPL, also includes purchasing goods, if it is done for profit or in a professional manner'.
The above view should be considered accurate. Without repeating the arguments extensively cited by the Author, it should be stressed that the notion of 'turnover' referred to in Article 305 of the IPL has so far been unjustifiably identified with what the Author calls the 'active variety', i.e. disposal of goods.
If trading in goods is defined as 'the circulation of goods or finished products from the sphere of production to consumption or to the next production process', it is evident that both sellers and purchasers must be considered trading entities, provided that their acquisitions are made in a commercial or professional manner.The most common form of trading in goods is through a contract of sale. Roman law already provided a similar construct known as emptio venditio (purchase-sale), which emphasised the mutual benefits for both parties. The seller (vendor) was primarily responsible for delivering the goods to the buyer (emptor), while the buyer had to pay the agreed price. This meant that both the seller and the buyer had to be involved in the transaction. It is challenging to assert that only the seller is a trader and that the buyer becomes a trader only when they dispose of the goods further up the distribution chain (i.e. change their status from buyer to seller).A purposive interpretation suggests that it would be unnatural to divide the criminalisation of the circulation of goods according to which side of the transaction a person is on. The interpretation of Article 305 of the IPL, which accepts criminal liability for both parties engaged in professional trade, is to be favoured.In the classical case, the seller of the counterfeited trademark trades in two aspects - first as the buyer and then as the seller.This distinction is of great practical importance. In situations where the course of the offence would be impeded, for example by retaining goods intended for sale in stock, the act would be committed in the form of making a purchase of goods, despite the lack of disposal of goods whose commercial purpose was obvious.
Originally published 04 September 2024
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