CRIMINAL LAW AND INTELLECTUAL PROPERTY: Violation of intellectual property rights registered with SENAPI

"Restoring rights infringed by third parties linked to intellectual property registration (Signs, trademarks, three-dimensional designs, patents, and copyrights): Which path is best? Administrative or criminal process?

Countless times, both individuals and legal entities, especially the latter, have fallen victim to counterfeits, alterations, or illegal reproductions of their products, patents, or copyrights, protected and recognized by the National Intellectual Property Service – SENAPI. The optimal procedure remains uncertain. Here's a brief analysis.

The protection of various brands, signs, industrial designs, patents, and inventions internationally is governed and safeguarded by Decision No. 486 of the Andean Community of Nations "Common Regime on Industrial Property." Bolivia integrates this into its legal framework through ratification of the Protocol amending the Justice Creation Treaty of the Cartagena Agreement by Law No. 1872 of June 15, 1998. This constitutes the essential regulations applied by the National Intellectual Property Service (the regulatory institution for intellectual property rights in Bolivia), along with Administrative Resolution No. 017/2015 dated June 16, 2015, the Internal Procedure Regulation for Industrial Property of SENAPI.

It's understood that Decision No. 486 of the Andean Community of Nations "Common Regime on Industrial Property" binds all member countries of the Andean Community, including the Plurinational State of Bolivia. Regarding trademark protection, Article 134 of Decision No. 486 defines it as any sign distinguishing a product or service in the market, protecting not only the trademark but also signs, designs, colors, smells, shapes, sounds, and combinations of signs, consistent with Article 224 of SENAPI's Internal Procedure Regulation for Industrial Property.

Furthermore, Article 154 of Decision No. 486 determines that trademark registration with the respective national office grants the natural or legal person the right to exclusive use, specifically of trademarks registered with the National Intellectual Property Service – SENAPI. Therefore, no one can use, produce, reproduce, alter, counterfeit, or commercialize a product using registered signs or distinctive symbols, three-dimensional designs, industrial rights, or copyrights, in any product, service, or literary material. Neither can they apply such trademarks to similar products or manufacture or reproduce the trademark to take advantage of its commercial prestige, as in the case of counterfeiters and adulterators.

Articles 224 and subsequent of Decision 486 sanction the reproduction, translation, or international imitation of well-known distinctive signs, wholly or essentially, even in different products, if they cause confusion, economic or commercial damage, or unjust exploitation of the sign's prestige.

Having analyzed the legal framework for protecting trademark, sign, industrial design, patent, and invention rights internationally before SENAPI in the Plurinational State of Bolivia, it's clear that trademark owners, whether natural or legal persons, can initiate administrative or criminal actions to assert their infringed rights due to indiscriminate use or counterfeiting of their trademark, sign, or registered patent, among others. Administrative actions, regulated in Article 237 of Decision No. 486, range from infringement actions to precautionary measures, including the suspension of imports of the trademark or sign. However, SENAPI lacks the necessary conditions or personnel to guarantee compliance with these procedures, making them inapplicable to criminal matters, which are regulated in Article 257. Member countries establish procedures and sanctions for trademark counterfeiting offenses, as specified in the Bolivian Penal Code.

As a more effective alternative for restoring infringed intellectual property rights protected by SENAPI, criminal prosecution under the Bolivian Penal Code sanctions such behaviors through the offense of COUNTERFEITING AND UNAUTHORIZED USE OF TRADEMARKS AND PASSWORDS (Article 193), COMMERCIAL FRAUD (Article 235), and DECEPTION OF INDUSTRIAL PRODUCTS (Article 236), imposing imprisonment of 6 months to 3 years. Moreover, it protects and penalizes the reproduction, distribution, plagiarism, or publication of copyrights registered with SENAPI, such as literary, artistic, musical, scientific, television, or cinematographic works, through the offense of OFFENSES AGAINST INTELLECTUAL PROPERTY (Article 363), with imprisonment of six months to two years and a fine of 60 days.

In conclusion, the penal route is the best mechanism and process to restore intellectual property rights infringed by third parties due to the aforementioned unlawful behaviors. Although the custodial sentences established by substantive penal law may be served by the offender at liberty in the case of a first offense and not exceeding three years, they may increase in cases of multiple offenses or recidivism, leading to imprisonment.

In our commercial reality, as a law firm, we have achieved optimal results through the initiation of criminal proceedings against infringers. Constrained by the penalties and reparations, they have ceased their illegal actions, setting a precedent for future offenders and providing peace of mind to our clients and companies. They can once again enjoy the protection of their intellectual property rights recognized by SENAPI regarding trademarks, distinctive signs, three-dimensional designs, industrial designs, and registered copyrights.

Sergio Díaz Gutiérrez – Managing Partner
Litigation and Corporate Lawyer