Trade Mark Infringement as a Criminal Offence

Publication Date01 Jul 2004
DOIhttp://doi.org/10.1111/j.1468-2230.2004.00505.x
AuthorAndreas Rahmatian
Trade Mark Infringement as a Criminal O¡ence
Andreas Rahmatian
n
1 INTRODUCTION
Intellectual property lawyers are aware of, but not normally much concerned
about, the criminal liability which may result from the infringement of a regis-
tered trade mark. This issue is usually only brie£y discussed.
1
That may partly be
due to the fact that this area of the law sits uneasilybetween the established, and
quite di¡erent, disciplines of intellectual property law andcriminal law, and law-
yers of either type may ¢nd themselves somewhat uncomfortable giving too
much thought to the respective unfamil iar component. However, in the light of
the severepenalty for criminal infringement of registered trade marks^ up to ten
years’ imprisonment
2
^ and in the light of recent court cases, particularly the
House of Lords decisionof RvJoh nston e of 22 May 2003,
3
it has become important
to look at this neglected aspect of intellectual property law more closely.
2 THE CRIMINAL OFFENCE OF TRADE MARK INFRINGEMENT
The criminal o¡ences in relation to trade mark infringement are set out in
sections 92^96 and101 of the Trade Marks Act 1994,
4
section 92 being the most
relevant provision. This section comprises several complex crimes dealing with
infringementof a registered trade mark.
In sect ion 92 (1) (2) and (3), the actusreus,i.e.alltheelementsofthecrimewhich
refer to the prohibited behaviour or conduct,
5
includes (a) the application to
goods of a sign identical to, orlikely to be mistaken for, a registered trade mark,
or (b) the sale, distribution etc., or (c) the possession, control etc. in thecourse of a
business, of goods with such a sign. Another type of criminal conduct is the
making of an article speci¢cally designed for making copies of a sign identical
n
Mag. iur. et phil., Dr. iur. (V|enna), LL.M. (London), Solicitor (England & Wales). Lectureri n Law,
Universityof Stirling, Scotland.
1 Compare W. R. Cornish and D. Llewelyn, IntellectualProperty (London: Sweet and Maxwell, 5
th
ed, 2003) paras 2^20, 17^108n 19 (in the following: Cornish, [para]); L. Bently and B. Sherman,
Intellectual Property Law (Oxford: Oxford University Press, 2001) 1032^1034 (in the following:
Bently and Sherman). Longer treatment of the trade mark o¡ences in C. Morcom et al, The
ModernLaw of Trade Marks (London: Butterworths, 1999) chapter 20, 419^478 (in the following:
Morcom [para]); A.Worsall and A. Clark, Anti-Counterfeiting: A Practical Guide (Bristol: Jordans,
1998)156^162.
2 Trade Marks Act 1994,s 92 (6).
3RvJohnstone [2003] UKHL 28, [2003]FSR 748, [2003]3 All ER 884, [2003] 1WLR 1736.
4 c26. In the following, section numbers refer to the Trade Marks Act 1994 if not stated otherwi se.
5 A.Ashworth, Principles of Criminal Law (Oxford: OxfordUniversity Press, 3
rd
ed,1999) 98 (here-
inafter: Ashworth)
TradeMark Infri ngement as a Criminal O¡ence
670 rThe Modern Law ReviewLimited 2004

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