Buying fake goods online and importing: the Court of Appeal of Milan clarifies

A recent ruling by the Court of Appeal of Milan (C. App. Milan, IV Criminal Section, 08.05.2017-28.06.2017, n. 3130), resulting from some conflicting decisions, establishes some principles regarding counterfeiting. 

The case, which is quite common, involved a person who had purchased two counterfeit watches on the Internet, which never reached him because they were seized by Customs upon arrival in Italy of the postal package. 

The defendant, convicted in the first instance for introducing products with false markings into the State (art. 474 paragraph 1 of the Criminal Code), appealed, invoking the decriminalization of the conduct, following the ruling of the United Sections no. 22225/12; alternatively, he requested acquittal due to the criminal irrelevance of the fact, pursuant to art. 131 bis of the Criminal Code.

On both of these issues, in fact, in recent times there have been oscillations in the Milanese district jurisprudence. 

The Court of Appeal, however, rejected both of the defendant's requests and confirmed the sentence imposed on him by the Tribunal. 

On the first point, the motivation recalls the recent ruling of the Court of Cassation, V Criminal Section, no. 6354/16 which, in an identical case, had rejected a similar objection highlighting how the United Sections of 2012 had dealt with the decriminalization of the purchase made by a final buyer, already punished by art. 648 of the Criminal Code, and not the importation of goods with false signs, which constitutes different and concurrent conduct, punished by art. 474 co. 1 of the Criminal Code. According to the Milanese territorial Court, "the conduct committed by the defendant with the introduction into the territory of the State of the products in question, bearing a counterfeit trademark, therefore maintains its criminal relevance, which does not cease due to the cessation of the criminal relevance of the different and concurrent conduct of receiving the goods, already attributable to the violation of art. 648 of the Criminal Code". 

Even more interesting is the reasoning of the Milanese Court regarding the applicability of the cause of non-punishability due to the particular triviality of the fact, pursuant to art. 131 bis of the Criminal Code. 

The wide margins of discretion that characterize the institution, together with the relevance of the consequences (we are not talking about mitigating a sentence but rather about acquitting a defendant even if he is found responsible for an act constituting a crime) suggest that particular attention should be paid to identifying the limits within which the evaluation criteria to which the judge must rely must be placed. 

And so the Court of Appeal, on the one hand, recalling that in the case in question an “importation” conduct was contested, states that this is “in itself an integral disvalue greater than the simple marketing of the imported product”. 

Here we recall the reformulation of art. 474 of the Criminal Code introduced by Law 99/2009, which separated, and sanctioned it more severely, the conduct of introduction into the State from the others (“whoever holds for sale, offers for sale or otherwise puts into circulation”), all of which were previously punished in the same way. A choice, that of the Legislator, which evidently recognized a greater disvalue in importation, also confirmed by the extension of the scope of criminal relevance, previously limited to cases characterized by commercial purposes and today, instead, extended also to those characterized by the mere purpose of profit, such as, typically, the case of importation of a single good intended for personal use. In fact, the Court observes: “the introduction into the territory of the State of goods with a counterfeit trademark determines in itself, even when it concerns a single example, significant damage to the image of the owner of the trademark, considering the debasement of the original goods that occurs with the exhibition of the counterfeit ones”. 

The reasoning appears to be acceptable, especially if one considers that the cases concerning counterfeiting are characterised by the permanence of the effects since the offence to the legal asset protected by the law is a consequence of the very existence and circulation (even in the mere sense of display) of the asset bearing false trademarks. 

In other words, according to the Court of Appeal, in the crimes referred to in art. 474, paragraph 1 of the Criminal Code, it is not possible, not even in theory, to configure a hypothesis of insignificance of the damage, as a constitutive element of the triviality of the fact referred to in art. 131 bis of the Criminal Code, in line with the exceptional nature (and therefore of strict interpretation) of this pardoning institution. 

Finally, the ruling also touches on the issue - often of practical interest - of testimonies given by individuals who are employees of the injured party, owner of the trademarks. The defendant, in his appeal, had contested the reliability of the recognition of the counterfeit nature of what was seized, given the non-third-party nature of the individual called to testify. In this regard, the Court appears determined in considering this an unfounded argument: "the manufacturer of goods bearing a prestigious trademark has no interest in having the falsity of goods that are instead original be affirmed".