Trade Mark Infringement as a Criminal Offence

Date01 July 2004
Published date01 July 2004
Trade Mark Infringement as a Criminal O¡ence
Andreas Rahmatian
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.
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
^ and in the light of recent court cases, particularly the
House of Lords decisionof RvJoh nston e of 22 May 2003,
it has become important
to look at this neglected aspect of intellectual property law more closely.
The criminal o¡ences in relation to trade mark infringement are set out in
sections 92^96 and101 of the Trade Marks Act 1994,
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,
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
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
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,
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
ed,1999) 98 (here-
inafter: Ashworth)
TradeMark Infri ngement as a Criminal O¡ence
670 rThe Modern Law ReviewLimited 2004

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