R v T

United Kingdom

03.08.2017

Intellectual Property Rights

Unless Defendants have the statutory defence, they have committed an offence

Present is an interlocutory appeal in a criminal case which concerns the correct construction of Section 92(1) of the Trade Marks Act, 1994. The Appellants are a limited company and two individuals connected with its management. They are indicted for, offences of unauthorised use of trade marks, contrary to section 92(1)(b) and (c) of the 1994 Act. Appellant says that, goods which were originally manufactured with the permission of the trade mark proprietor, but which are ones where he has not authorised the sale, are not true counterfeits and are not within the statute. Section 92(1) does not apply, they contend, to goods put on the grey market.

Reading of “such a sign” in Section 92(1)(b) is that, it refers back to the sign mentioned in Section 92(1)(a) i.e. a sign which is “identical to, or likely to be mistaken for, a registered trade mark”. Section 92(1)(b) therefore covers the unauthorised sale of any goods bearing a trademark (regardless of whether the trademark was applied to the goods in their manufacture with consent or not). But this reference back to Section 92(1)(a) does not also incorporate into the meaning of “such a sign” the commission of an offence under Section 92(1)(a), i.e. the requirement that, sign has been applied without the consent of the proprietor.

The offences set out in paragraphs (a), (b) and (c) of Section 92 are, as a matter of plain reading, not cumulative, but separate. It is not necessary that, one has been committed (by someone) before one can say that the next in line has been. The mental element of a view to gain or the intent to cause loss is applicable to all three. Paragraph (a) then makes it an offence to apply such a mark, without consent and with the relevant mental element. Paragraph (b) makes it an offence to sell (etc) goods with such a mark, without the consent of the proprietor and with the necessary mental element. Paragraph (c) does the same for the preparatory offence of possession in the course of business with a view to behaviour which would be an offence under (b), again without the consent of the proprietor and with the relevant mental element. Sub-paragraph (c) thus, involves anticipation (but not necessarily the commission) of an offence under (b). Of course, a person may commit all three offences, or different people may commit all three between them. But that is not necessary. Each stands alone.

There is no reason to strain language of Section 92(1)(b) of Act, so as to exclude sale of “grey market” goods. Defendants who set out to buy up grey market goods to make a profit on re-sale do so because the object is to cash in on someone else’s trade mark. If such be proved, they have scant claim to a beneficent construction of the Act. As it is, its ordinary reading plainly means that, unless they have the statutory defence, they have committed an offence.

The 1994 Act does not, therefore, deprive the Defendants of any property which they have. The most it does, is to regulate their use or the manner of their disposal of goods, which is permitted under second paragraph of Article 1 in general interest, which must include a general interest in protection of trade marks. There is, in any event nothing disproportionate in the 1994 Act penalising sales, when the infringing trade mark is still attached, nor in imposing a criminal sanction on those who might otherwise calculate that the risk of liability in damages is worth taking. That is a perfectly legitimate balance to draw between rights of proprietor to protect his valuable trademark and goodwill, and those of person who wishes to sell goods, which he has bought.

Tags : Infringement Provision Interpretation

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