A. Research Questions
1. What is the legal justification of Criminal law according to the normative values of a democratic culture?
2. Does the criminal enforcement on counterfeiting provide a social advantage over other legal alternatives? What kind of actions should be included within the scope of the trademark offence?
3. How should the criminal enforcement on counterfeiting be designed in the European Union? Can the European Union achieve the objectives better than the Member States?
B. Methodology
1. Economic and semiotic analysis of Intellectual Property Rights
2. Cost-benefit analysis of Criminal law
3. Case-Law Study
C. Conclusions
1.The rejection of the Anti-Counterfeiting Trade Agreement (ACTA) by the European Parliament and the withdrawal of the Directive Proposal on criminal measures by the European Commission highlight the necessity to conduct further research on the criminalization of counterfeiting in the European Union.
2. An economic and semiotic analysis of trademark exclusive rights aims to explain how the propertization of distinctive signs influences on the meaning-making process of a democratic culture in order to solve the tension between property rights and freedom of speech. This interdisciplinary approach has the advantage to provide new argumentative strategies to protect the trademark holder’s interests without any need to embrace the marginalization of the dialogical ability of citizens to participate in the meaning-creating process of distinctive signs.
3. The semiotic model that has been chosen is the the synonymic proscription model. This normative model aims to justify a prison sentence when the trademark holder’s financial vicarious liability is externalized by third parties. According to this model, the scope of the trademark offence for the European Economic Area should be laid down as follows:
“ A. Those who produce, import, export, commercialize or sell counterfeit goods can be subject to a prison sentence.
B. Counterfeit goods shall be all those goods that are able to externalize the trademark holder’s financial vicarious liability.
C. The trademark holder’s financial vicarious liability shall be applicable only to those goods that, having been registered in a Member State or with the OHIM, are subject to financial vicarious liability.
D. The scope of counterfeit goods shall be limited to the examination of indistinguishability of the signifiers of the trade mark and the competing nature of goods of the trade mark.
E. No person shall be subject to a prison sentence if there is a reasonable belief that the products have been put into the marketplace with the consent of the trademark holder or any licensee.
F. The following actions shall not be regarded as a trade mark offence: parallel imports, breach of a licence contract by licensees or third parties with the consent of licensees, injuries to trade mark reputation that do not externalize the trademark holder’s financial vicarious liability, trade mark label trafficking and personal uses of counterfeit goods”
