R v Johnstone (Robert Alexander)
| Jurisdiction | England & Wales |
| Judge | Lord Justice Tuckey,LORD JUSTICE TUCKEY,MR JUSTICE BURTON,MR JUSTICE PUMFREY |
| Judgment Date | 31 January 2002 |
| Neutral Citation | [2002] EWCA Crim 194 |
| Court | Court of Appeal (Criminal Division) |
| Date | 31 January 2002 |
| Docket Number | Case No: 20001614Z5 20004168Y4 20004169Y4 20004312Y4 2000969Y2 |
[2002] EWCA Crim 194
IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CRIMINAL DIVISION)
Royal Courts of Justice
Strand,
London, WC2A 2LL
Lord Justice Tuckey
Mr Justice Pumfrey and
Mr Justice Burton
Case No: 20001614Z5
20005075Y2
20004168Y4
20004169Y4
20004312Y4
2000969Y2
Mr David Lane QC appeared on behalf of the Appellant Johnstone
Mr A Roughton appeared on behalf of the Appellants Croxon & Eley
Mrs C.M. Wilson appeared for Judgment only on behalf of the Appellant Ho
Non-Counsel Applications by Applicants Harrison and Mayron
Mr Brian O'Neil (Miss M Behav, for Judgment) appeared on behalf of the Crown in the cases of johnstone
Mr C. Rush appeared on behalf of the Crown in the cases of Croxson, Ho, Mayron and Eley
These cases raise two broad questions of importance : whether section 92 of the Trade Marks Act 1994 (the Act) is compatible with Council Directive 89/104 EEC to approximate the laws of Member States relating to trade marks (the Directive) and; whether it is a defence to a criminal charge under section 92 that the defendant's acts do not amount to a civil infringement of the trade mark.
The Appellants or Applicants were convicted of, or, after unsuccessful legal submissions, pleaded guilty to offences under section 92. In Johnstone the Judge certified the following questions under section 1 (2)(b) of the Criminal Appeal Act 1968:
1) Whether in a prosecution brought under section 92(1) of the Act
a) it is necessary for the Crown to prove "an infringement of the registered trade mark" ?
b) a defendant relying on the statutory defence provided by section 92(5) may further rely upon sections 9,10 and 11 ?
2) a) What do the words "infringement of a trade mark" in section 92 (5) mean?
b) Do they mean "an unauthorised use of a registered trade mark" ?
3) Whether section 92 of the Trade Marks Act 1994 is compatible with the Directive ?
4) Whether the penalties provided for in section 92(6) of the Act are effective, proportionate and dissuasive for the purpose of Article 5 of the Treaty of Rome ?
We have also been asked to give guidance about the effect of the decision in R -v- Lambert (2001) 3WLR 706 on section 92(5) of the Act although this has no bearing on the instant cases which were decided before the HRA came into force.
To understand the issues to which we have referred it is necessary to set out the most relevant provisions of the Act at the outset. Section 92 appears in Part III headed Administrative and Other Supplementary Provisions under the sub-heading Offences. It says :
92. Unauthorised use of trade mark, &c in relation to goods.
1) A person commits an offence who with a view to gain for himself or another, or with intent to cause loss to another, and without the consent of the proprietor -
(a) applies to goods or their packaging a sign identical to, or likely to be mistaken for, a registered trade mark, or
(b) sells or lets for hire, offers or exposes for sale or hire or distributes goods which bear, or the packaging of which bears, such a sign, or
(c) has in his possession, custody or control in the course of a business any such goods with a view to the doing of anything, by himself or another, which would be an offence under paragraph (b).
(3) A person commits an offence who with a view to gain for himself or another, or with intent to cause loss to another, and without the consent of the proprietor -
(a) makes an article specifically designed or adapted for making copies of a sign identical to, or likely to be mistaken for, a registered trade mark, or
(b) has such an article in his possession, custody or control in the course of a business,
knowing or having reason to believe that it has been, or is to be, used to produce goods, or material for labelling or packaging goods, as a business paper in relation to goods, or for advertising goods.
(4) A person does not commit an offence under this section unless _
(a) the goods are goods in respect of which the trade mark is registered, or
(b) the trade mark has a reputation in the United Kingdom and the use of the sign takes or would take unfair advantage of, or is or would be detrimental to, the distinctive character or the repute of the trade mark.
(5) It is a defence for a person charged with an offence under this section to show that he believed on reasonable grounds that the use of the sign in the manner in which it was used, or was to be used, was not an infringement of the registered trade mark.
(6) A person guilty of an offence under this section is liable -
(a) on summary conviction to imprisonment for a term not exceeding six months or a fine not exceeding the statutory maximum, or both,
(b) on conviction on indictment to a fine or imprisonment for a term not exceeding ten years, or both.
Section 104 of the Act says :
In this Act the expressions listed below are defined by or otherwise fall to be construed in accordance with the provisions indicated.
The provisions indicated for the words "infringement (of registered trade mark)" are sections 9(1) (2) and 10. Section 9 is in Part 1 headed Registered Trade Marks. The first eight sections define what trade marks are and set out the grounds for refusal of registration. Under the sub-heading Effects of registered trade mark. Sections 9 to 12 say :
9. Rights conferred by registered trade mark
(1) The proprietor of a registered trade mark has exclusive rights in the trade mark which are infringed by use of the trade mark in the United Kingdom without his consent.
The acts amounting to infringement, if done without the consent of the proprietor, are specified in section 10.
(2) References in this Act to the infringement of a registered trade mark are to any such infringement of the rights of the proprietor...
10. Infringement of registered trade mark
(1) A person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.
(2) A person infringes a registered trade mark if he uses in the course of trade a sign where because -
(a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or
(b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.
(3) A person infringes a registered trade mark if he uses in the course of trade a sign which -
(a) is identical with or similar to the trade mark, and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered,
where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.
(4) For the purposes of this section a person uses a sign if, in particular, he -
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market or stocks them for those purposes under the sign, or offers or supplies services under the sign;
(c) imports or exports goods under the sign; or
(d) uses the sign on business papers or in advertising.
(5) A person who applies a registered trade mark to material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, shall be treated as a party to any use of the material which infringes the registered trade mark if when he applied the mark he knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.
(6) Nothing in the preceding provisions of this section shall be construed as preventing the use of a registered trade mark by any person for the purpose of identifying goods or services as those of the proprietor or a licensee.
But any such use otherwise than in accordance with honest practices in industrial or commercial matters shall be treated as infringing the registered trade mark if the use without due cause takes an unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark.
11 Limits on effect of registered trade mark
(1) A registered trade mark is not infringed by the use of another registered trade mark in relation to goods or services for which the latter is registered (but see section 47(6) (effect of declaration of invalidity of registration)).
(2) A registered trade mark is not infringed by -
(a) the use by a person of his own name or address,
(b) the use of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services, or
(c) the use of the trade mark where it is necessary to indicate the intended purpose of a product or service (in particular, as accessories or spare parts)
provided the use is in accordance with honest practices in industrial or commercial matters.
(3) A registered trade mark is not infringed by the use in the course of trade in a particular locality of an earlier right which applies only in that locality ......
12. Exhaustion of rights conferred by registered trade mark
(1) A registered trade mark is not infringed by the...
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