Information;Order — ECLI:EU:C:2024:283
Date: 2024-04-08
Language of the case: Bulgarian
Court formation: Ninth Chamber
Subject matter: Fundamental rights;Charter of Fundamental Rights
Procedure: Reference for a preliminary ruling;Reference for a preliminary ruling - inadmissible
Origin: Bulgaria

Summary C-558/23 – 1 
Case C-558/23 [Dramanova] i 
Summary of the request for a preliminary ruling pursuant to Article 98(1) of 
the Rules of Procedure of the Court of Justice  
Date lodged:  
6 September 2023 
Referring court:  
Rayonen sad Lukovit (Bulgaria) 
Date of the decision to refer: 
6 September 2023 
Parties to the criminal proceedings:  
Rayonna prokuratura Lovech, Teritorialno otdelenie grad Lukovit, 
Bulgaria 
IC 
  
Subject matter of the main proceedings 
Decision of the court concerning an agreement [with the public prosecutor’s 
office] whereby the accused confessed in the pre-trial proceedings to being guilty 
of having committed a criminal offence under Article 172b of the Nakazatelen 
kodeks (Criminal Code; ‘the NK’) – unlawful use of protected trade marks. 
Subject matter and legal basis of the request 
The referring court wishes to ascertain, on the basis of the second paragraph of 
Article 267 TFEU, whether EU law (in particular the principle of the 
proportionality of the penalty provided for and the principle of the legality of 
criminal offences and penalties) precludes national legislation which: (1) may lead 
to the imposition of a custodial sentence for a first infringement of protected 
intellectual property rights, irrespective of the extent and seriousness of the 
infringement; and (2), simultaneously provides for liability under both 
administrative and criminal law in respect of unlawful use of protected trade 
 
i The name of the present case is a fictitious name. It does not correspond to the real name of any party to the proceedings. 
EN 
SUMMARY OF THE REQUEST FOR A PRELIMINARY RULING – CASE C-558/23 
 
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marks, without laying down any objective criteria for distinguishing the criminal 
offence from the administrative offence. 
Questions referred for a preliminary ruling 
1. Does the principle of proportionality permit a national legal provision, 
such as Article 172b of the Nakazatelen kodeks (Criminal Code), 
which provides for a custodial sentence of one to six years and a fine 
for a first infringement of intellectual property rights, irrespective of 
whether the unlawful use of a protected trade mark is wilful and/or on 
a commercial scale? 
2. If the first question is answered in the negative, how are the 
expressions ‘wilful’ and ‘on a commercial scale’, used in Article 61 of 
the Agreement on Trade-Related Aspects of Intellectual Property 
Rights (the TRIPS Agreement), to be interpreted? 
3. Do the principles of legality and the prohibition of the arbitrary 
application of the law permit national legislation which simultaneously 
provides for liability under both administrative law (Article 127 of the 
Zakon za markite i geografskite oznachenia (Law on trade marks and 
geographical designations)) and criminal law (Article 172b of the 
Criminal Code), without laying down clear criteria allowing the degree 
of danger to the general public posed by one and the same act 
(unlawful use of protected trade marks) to be objectively and 
predictably assessed? 
Provisions of European Union law and case-law relied on 
Agreement on Trade-Related Aspects of Intellectual Property Rights (‘the TRIPS 
Agreement’), Article 61 
Charter of Fundamental Rights of the European Union (‘the Charter’), Article 49 
Convention for the Protection of Human Rights and Fundamental Freedoms (‘the 
ECHR’), Article 5(1)  
Judgment of 6 October 2020, Commission v Hungary (Higher education), 
C-66/18, EU:C:2020:792 
Judgment of 3 May 2007, Advocaten voor de Wereld, C-303/05, EU:C:2007:261 
Judgment of 12 February 2019, TC, C-492/18 PPU, EU:C:2019:108 
Judgment of 15 March 2017, Al Chodor and Others, C-528/15, EU:C:2017:213 
DRAMANOVA 
 
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Provisions of national law relied on 
Zakon za ratifitsirane na Protokola za izmenenie na sporazumenieto za svarzanite 
s targoviata aspekti na pravata varhu intelektualnata sobstvenost (Law ratifying 
the Protocol Amending the Agreement on Trade-Related Aspects of Intellectual 
Property Rights) 
Nakazatelen kodeks (Criminal Code) – Articles 2, 55 and 172b, the last of which, 
in the version in force at the time when the offence was committed in 2021, reads 
as follows: 
‘(1) A person who, without the consent of the holder of the exclusive right, uses 
in the course of trade a trade mark, design, plant variety or animal breed forming 
the subject of that exclusive right, or who uses a geographical indication or an 
imitation thereof without a legal basis, shall be punishable by a term of 
imprisonment not exceeding five years and a fine not exceeding five thousand 
Bulgarian leva (BGN). 
(2) If the act referred to in paragraph 1 is repeated or causes significant harmful 
effects, it shall be punishable by a term of imprisonment of five to eight years and 
a fine of five to eight thousand BGN.’ 
In 2022, Article 172b of the NK was amended so as to increase the penalty 
prescribed for the offence in question as follows: in accordance with paragraph 1, 
to imprisonment for a term of one to six years and a fine not exceeding 
BGN 10 000, and, in accordance with paragraph 2, to imprisonment for a term of 
five to eight years and a fine of BGN 10 000 to 15 000. 
Zakon za markite i geografskite oznachenia (Law on trade marks and 
geographical designations; ‘the ZMGO’) – Article 127, in accordance with 
paragraph 1 of which: 
‘(1) A person who uses in the course of trade within the meaning of Article 13(1) 
and (2) goods or services which bear a sign that is identical with, or similar to, a 
registered trade mark, without the consent of its proprietor, shall be punishable by 
a fine of BGN 2 000 to BGN 10 000, and sole traders and legal persons shall be 
punishable by a financial penalty of BGN 3 000 to BGN 20 000.’ 
Zakon za sadebnata vlast (Law on the Judiciary) – Article 136 und Article 138 
Metodicheski nasoki za rabota po prepiski i dela za prestaplenia protiv 
intelektualnata sobstvenost, utvardeni sas Zapoved No RD-02-12 ot 18.05.2018 na 
glavnia prokuror (Methodological guidelines for processing files and proceedings 
for intellectual property offences, approved by order No RD-02-12 of 18 May 
2018 of the Prosecutor General) 
Pravila za opredelyane na razmera na globite i imushtestvenite sanktsii, nalagani 
za izvarsheni administrativni narushenia po Zakona za markite i geografskite 
SUMMARY OF THE REQUEST FOR A PRELIMINARY RULING – CASE C-558/23 
 
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oznachenia i Zakona za promishlenia dizayn, utvardeni sas Zapoved № 3-223-(3) 
ot 10.12.2021 na predsedatelya na Patentnoto vedomstvo na Republika Bulgaria 
(Rules for determining the amount of fines and financial penalties for 
administrative offences under the Law on trade marks and geographical 
designations and under the Law on designs, approved by order No 3-223-(3) of 
10 December 2021 of the President of the Patent Office of the Republic of 
Bulgaria) 
Succinct presentation of the facts and the procedure in the main proceedings 
1 The accused, IC, was born [in] 1975. She is a Bulgarian national, a widow, works 
as a sole trader with a monthly income from trade of approximately BGN 700 
(EUR 350) and receives a sickness pension. 
2 The business she runs is a general shop. The shop sells basic foodstuffs, 
vegetables, fruit, drinks, clothes and shoes, on mixed display racks.  
3 The accused bought the clothes and shoes she resold at one of the largest open-air 
markets in Bulgaria, namely the market in Dimitrovgrad. 
4 On 10 November 2021, during a specialised police operation carried out by the 
Oblastna direktsia na MVR – Lovech (Provincial Directorate of the Ministry of 
the Interior – Lovech), sektor ‘Protivodeystvie na ikonomicheskata prestapnost’ 
(‘Combating economic crime’ unit) at IC’s business (shop), some of the goods on 
display there – a total of 61 items, including clothing, shoes and slippers, bearing 
corresponding signs that are phonetically and visually similar to the brands 
‘Adidas’, ‘Nike’, ‘Puma’, ‘Dolce & Gabbana’ and ‘Lacoste’ – were found and 
seized as a matter of urgency. An expert appointed in the proceedings for the 
preparation of a forensic economic opinion subsequently valued the goods at 
BGN 868 (approximately EUR 445). The goods are obvious imitations of original 
products that were displayed alongside potatoes, onions and similar foodstuffs. 
Even while the search was being conducted, the accused told police officers and 
the court that she had bought the goods at the market in Dimitrovgrad and that, up 
until that incident, she had not known that goods freely available to purchase at 
large markets could be illegal, particularly since all other small traders in the town 
operated in the same way as she did. 
5 Criminal proceedings were brought against IC under Article 172b(1) of the NK. 
During the pre-trial proceedings, the public prosecutor’s office, the defence 
counsel and the accused IC reached an agreement as to the outcome of the 
criminal proceedings. That agreement was submitted by the Rayonna prokuratura 
Lovech, teritorialno otdelenie Lukovit (Lukovit division of the Lovech District 
Public Prosecutor’s Office) for review by the referring court and is the subject of 
the main proceedings. 
6 Under the agreement, the accused pleads guilty to having, in the course of trading 
in a business (shop) run by her own undertaking, made use of the objects of 
DRAMANOVA 
 
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exclusive rights to certain trade marks without the consent of the proprietors of 
those rights, which constitutes a criminal offence under Article 172b(1) of the NK 
for which, in accordance with Article 55 and Article 2 of the NK (in the presence 
of mitigating circumstances, replacement of the custodial sentence with a period 
of probation, and application of the law in force at the time when the offence was 
committed), a suspended sentence subject to two measures (the obligation to 
report twice a week to her current address and to meet regularly with a probation 
officer, both measures being applicable for a period of eight months) was 
imposed, together with the requirement that the object of the offence, in the form 
of the goods concerned, be confiscated. 
7 The accused admits her guilt, shows remorse and requests that the agreement as to 
the outcome of the proceedings and the determination of her sentence be 
approved. She has no previous convictions, has not committed any administrative 
offences under the ZMGO, has not been the subject of any investigations ordered 
by the public prosecutor’s office or of any pre-trial proceedings instituted in 
connection with other criminal offences and enjoys a good reputation in the 
community. 
The essential arguments of the parties in the main proceedings 
8 The referring court does not specify the position adopted by the parties in the 
proceedings on the questions referred for a preliminary ruling. 
Succinct presentation of the reasoning in the request for a preliminary ruling 
9 The essential questions with which the court seised is faced, in the context of its 
jurisdiction to examine the lawfulness of the agreement as to the outcome of the 
criminal proceedings in question, arise from doubts as to whether the constituent 
elements of the offence prescribed by law (in the NK) are consistent with the EU 
law requirement of clarity, and whether the penalty laid down in that law is 
compatible with the fundamental principles of the European Union. 
10 The present request for a preliminary ruling is related, in essence, to the request 
for a preliminary ruling, made by another national court, the Rayonen sad Nesebar 
(District Court, Nesebar, Bulgaria), that has given rise to the proceedings in Case 
C-655/21 before the Court of Justice of the European Union, concerning a request 
for an interpretation of EU law relating to the same offence as defined by 
constituent elements attracting a more severe penalty (Article 172b(2) of the NK), 
[the present request for a preliminary ruling] raising additional matters and 
questions concerning the principles of the European Union which are specific to 
this case. 
11 First, the referring court states that the provisions of national law at issue (which 
come within criminal and administrative law) constitute measures implementing 
international rules on the protection of intellectual property which became part of 
SUMMARY OF THE REQUEST FOR A PRELIMINARY RULING – CASE C-558/23 
 
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EU law when the European Community acceded to the TRIPS Agreement (by 
way of Council Decision of 22 December 1994). 
12 That statement is supported by judgments of the Court of Justice in which it is 
expressly stated that an international agreement entered into by the European 
Union is, from its entry into force, an integral part of EU law (judgment of 
6 October 2020, Commission v Hungary (Higher education), C-66/18, 
EU:C:2020:792, paragraph 69 and the case-law cited). 
13 If the Court of Justice were to share the referring court’s view that the facts [of the 
present case] come within the scope of EU law, it would follow that both the 
principles of the European Union and the Charter of Fundamental Rights of the 
European Union are applicable, in accordance with Article 51(1) of the Charter. 
14 It should further be noted that the Bulgarian legislature’s intention in introducing 
Article 172b of the NK was precisely to transpose the measures laid down in EU 
law, as is clear from the grounds for criminalising such acts which are set out in 
the draft amendment to the NK adopted in 2006 (pre-accession period for the 
Republic of Bulgaria). 
15 For the reasons given, the referring court wishes to ascertain whether the principle 
of proportionality permits national legislation which may lead to the imposition of 
a custodial sentence for a first infringement of protected intellectual property 
rights, irrespective of the extent and seriousness of the infringement. 
16 The doubts as to the proportionality of the prescribed penalty are based on the 
principle of humanism (restricting the scope of criminal punishment, inter alia 
through alternative penalties to imprisonment, and through the mechanism of 
exemption from criminal liability) that traditionally underpins the Bulgarian legal 
system, and on how significantly disproportionate the prescribed penalties appear 
to be when the offence provided for in Article 172b of the NK is compared with 
the constituent elements of other offences traditionally found in any democratic 
community. 
17 For example, in accordance with Article 129 of the NK, the infliction of moderate 
bodily harm (which includes permanent impairment of sight or hearing; 
permanent impairment to the mobility of limbs and the functions of sexual organs; 
disfigurement; injuries to the cranial, thoracic and abdominal cavities, and so on) 
is punishable by imprisonment for a term of up to six years, meaning that, since 
there is no lower limit for the penalty applicable, the court may replace the 
custodial penalty with a suspended sentence, provided that the relevant conditions 
are met (exceptional/numerous mitigating circumstances), an option which is no 
longer available following the latest amendment to Article 172b of the NK. 
18 Following its amendment, Article 172b of the NK prescribes for the intellectual 
property offence concerned a penalty – imprisonment for a term of one to six 
years and a fine of up to BGN 10 000 – even more severe than that applicable to 
acts preparatory to murder, for which Article 117 of the NK lays down a penalty 
DRAMANOVA 
 
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consisting only of imprisonment for a term of one to six years, and does not 
provide for the cumulative imposition of a fine. 
19 That disproportionate increase in the penalty for the offence provided for in 
Article 172b of the NK was criticised even by members of parliament in the 
course of the legislative procedure for adopting the amendment to the NK. It has 
also come in for criticism from legal commentators, who note that, as a result of 
that amendment, the criminal offence in question must be classified as serious and 
special investigative methods may now be used to prevent and detect it. 
20 For the reasons given, the referring court wishes to be given some guidance as to 
how the principle of proportionality is properly to be interpreted in the national 
matter at issue, in particular whether the criteria referred to in Article 61 of the 
TRIPS Agreement, that is to say, the presence of a wilful infringement on a 
commercial scale, are to be taken into account and how those criteria are to be 
interpreted. 
21 The question raised is made more urgent by the fact that, under national law, the 
objective elements of the administrative offence provided for in Article 127 of the 
ZMGO and those of the criminal offence provided for in Article 172b of the NK 
are identical, but domestic law does not lay down any objective criteria by which 
to determine the degree of danger to the public on the basis of which a specific act 
(use of a trade mark without the consent of its proprietor) is to be classified as an 
administrative offence or, conversely, as a criminal offence. 
22 The lack of clarity as to the circumstances in which the danger to the public 
increases to such a degree as to change the act from an administrative offence to a 
criminal offence leads to inconsistent case-law and arbitrary assessment by the 
public prosecutor’s office and specialised administration. The referring court gives 
examples of four types of judicial decision: (1) verdicts in criminal proceedings 
concerning offences prosecuted ex officio by the public prosecutor’s office, in 
which the courts share the public prosecutor’s office’s view that the act constitutes 
a criminal offence, find the offender guilty and impose a penalty; (2) verdicts in 
the same types of proceedings, in which the courts acquit the accused on the 
criminal charges brought under Article 172b of the NK and impose penalties for 
offences under administrative law, on the assumption that the act in question 
constitutes not a criminal offence but an administrative offence; (3) decisions in 
administrative offence proceedings instituted on the basis of actions lodged by the 
infringing parties against decisions imposing administrative-law penalties (fines) 
for the commission of administrative offences and making it apparent that those 
decisions were issued after the public prosecutor’s office had discontinued the 
criminal proceedings; (4) decisions in criminal proceedings concerning the private 
prosecution of offences which have been instituted, by way of incidental actions 
brought by the injured legal persons who are the proprietors of the trade marks in 
question, against the decisions of the public prosecutor’s office discontinuing the 
criminal proceedings on the ground that the act in question constitutes an 
administrative offence in accordance with Article 127 of the ZMGO. The 
SUMMARY OF THE REQUEST FOR A PRELIMINARY RULING – CASE C-558/23 
 
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unpredictability of the criteria on the basis of which the case-law categorises the 
degree of danger posed to the general public by the act in question seems obvious. 
23 It is clear that the number of items (goods) and the value thereof do not constitute 
a suitable determining criterion, since, according to the rules of the Patentno 
vedomstvo (Bulgarian Patent Office), an act may retain its character as an 
administrative offence even if the value of the goods illegally bearing the trade 
marks exceeds BGN 20 000 and the number of items exceeds 1 500. 
24 In the light of the national legislation cited and the national case-law, the referring 
court has doubts as to whether Article 172b of the NK is compatible with the 
principle of the legality of criminal offences and penalties. 
25 The referring court’s doubts are based on the criteria laid down in the case-law of 
the European Court of Human Rights and confirmed in the Treaty on European 
Union and in the case-law of the Court of Justice of the European Union. 
26 In the judgment of 3 May 2007 (Grand Chamber), Advocaten voor de Wereld, 
C-303/05, paragraphs 49 to 50, the Court of Justice recalls that ‘the principle of 
the legality of criminal offences and penalties (nullum crimen, nulla poena sine 
lege), which is one of the general legal principles underlying the constitutional 
traditions common to the Member States, has also been enshrined in various 
international treaties, in particular in Article 7(1) of the European Convention for 
the Protection of Human Rights and Fundamental Freedoms (see in this regard, 
inter alia, Joined Cases C-74/95 and C-129/95 X [1996] ECR I-6609, 
paragraph 25, and Joined Cases C-189/02 P, C-202/02 P, C-205/02 P to 
C-208/02 P and C-213/02 P Dansk Rørindustri and Others v Commission [2005] 
ECR I-5425, paragraphs 215 to 219). This principle implies that legislation must 
define clearly offences and the penalties which they attract. That condition is met 
in the case where the individual concerned is in a position, on the basis of the 
wording of the relevant provision and with the help of the interpretative assistance 
given by the courts, to know which acts or omissions will make him criminally 
liable (see, inter alia, European Court of Human Rights judgment of 22 June 2000 
in Coëme and Others v Belgium, Reports 2000-VII, § 145)’. 
27 The referring court also takes into account the interpretation provided by the Court 
of Justice in paragraphs 59 and 60 of the judgment of 12 February 2019, TC, 
C-492/18 PPU, EU:C:2019:108, concerning the requirements of clarity and 
predictability, according to which the objective of the safeguards relating to 
liberty, such as those enshrined in both Article 6 of the Charter and Article 5 
ECHR, consists in particular in the protection of the individual against 
arbitrariness. If the execution of a measure depriving a person of liberty is to be in 
keeping with that objective, this means, in particular, that there can be no element 
of bad faith or deception on the part of the authorities (judgment of 15 March 
2017, Al Chodor, C-528/15, EU:C:2017:213, paragraph 39 and the case-law 
cited); a person’s right to liberty is subject to compliance with strict safeguards, 
namely the existence of a legal basis which justifies it and which must meet the 
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requirements of clarity, predictability and accessibility in order to avoid any risk 
of arbitrariness, as paragraph 58 of [that] judgment makes clear (see, to that effect, 
judgment of 15 March 2017, Al Chodor, C-528/15, EU:C:2017:213, paragraph 40 
and the case-law cited). 
28 In the judgment in Medvedyev v. France, the Grand Chamber of the European 
Court of Human Rights held that the principle of lawfulness requires ‘that all law 
be sufficiently precise to avoid all risk of arbitrariness and to allow the citizen – if 
need be, with appropriate advice – to foresee, to a degree that is reasonable in the 
circumstances of the case, the consequences which a given action may entail’. 
29 If the foregoing is applied to the present case, and in the light of the national case-
law, it is difficult to predict whether the unlawful use of a protected trade mark is 
categorised as an administrative offence or as a criminal offence. 
30 For the reasons set out above, the referring court stays the criminal proceedings in 
the present case, in which it is called upon to decide whether the agreement as to 
the outcome of those proceedings submitted by the parties is in conformity the 
requirements of law and the accepted principles of morality, and makes a request 
for a preliminary ruling to the Court of Justice.