Intellectual and industrial property rights are fundamental to a company’s success or failure. A trademark protects the interests of its owner by granting an exclusive right over a distinctive sign used to identify certain products and services. Moreover, it also safeguards the rights of consumers or users, ensuring the origin and quality of the product or service that the trademark represents.
The rise of unfair practices, such as counterfeiting or unauthorized use of distinctive signs, underscores the importance of protecting and defending these rights in the market. Trademark counterfeiting is an increasingly common practice in which a third party seeks to exploit the commercial reputation that another trademark owner has established, resulting in severe harm to the industrial property rights of the trademark owner and the company’s reputation. This can negatively impact consumers’ perceptions of the quality, origin, or attributes of the products or services associated with the trademark.
To counteract these unfair activities, there are various strategies aimed at protecting trademarks, ranging from preventive to reactive actions, all intended to safeguard the commercial reputation of these distinctive signs.
The most important actions to oppose and confront trademark counterfeiting fall into two main categories: administrative actions and criminal actions.
- Administrative actions: They refer to any action that can be brought before an administrative or governmental body established to regulate the country’s intellectual and industrial property rights. In Honduras, this action is known as an “unfair competition complaint” and is filed with the General Directorate of Intellectual Property, a branch of the Institute of Property. Through this process, a trademark owner reports a third party who is using or fraudulently imitating their trademark without authorization, taking advantage of its commercial reputation.
When filing the complaint, the aggrieved natural or legal person must be the rightful owner of the trademark being counterfeited or unlawfully used, they have evidence of the illegal use of their trademark and that the action is filed through a legal representative. It is worth noting that this administrative process is an effective and timely action to prevent the counterfeiting or unauthorized use of a trademark within the national territory. The consequences for the infringer can include prohibition from using the trademark, an obligation to pay damages for its misuse, or fines ranging from ten to two hundred minimum wages.
- Administrative actions: They refer to any action that can be brought before an administrative or governmental body established to regulate the country’s intellectual and industrial property rights. In Honduras, this action is known as an “unfair competition complaint” and is filed with the General Directorate of Intellectual Property, a branch of the Institute of Property. Through this process, a trademark owner reports a third party who is using or fraudulently imitating their trademark without authorization, taking advantage of its commercial reputation.
- Criminal Actions: They involve filing criminal charges against those who commit crimes against Intellectual and Industrial Property. The Penal Code of Honduras considers distinctive signs as legally protected goods and, as such, establishes a specific crime for the “Illegitimate Use of Registered Distinctive Signs or Trademarks” (Penal Code of Honduras. Decree 130-2017. Art. 394).
The complaint for the crime of “Illegitimate Use of Registered Distinctive Signs or Trademarks” is filed with the Public Ministry, specifically with the Special Prosecutor’s Office for Intellectual Property and Information Security (FE-PROSI), which is responsible for investigating and prosecuting any person who commits a crime against Intellectual or Industrial Property in the country. This process is conducted by the prosecutors of this office, and if the natural or legal person who is counterfeiting the trademark is found guilty of the crime, they can be punished with imprisonment for one to four years and fined an amount equal to or up to three times the profit obtained through the fraudulent use of the distinctive sign.
It is recommended that the first strategic action be administrative, as this may prompt the infringer to cease the violation. If not, pursuing criminal actions is the most appropriate route, especially for repeat offenders who have committed these unfair acts repeatedly, as the penalties for these crimes are more severe coercive measures.