R v Johnstone [2003] 1 WLR 1736 - H of L - S 92 TMA - article 6(2) ECHR.
1) essence of a trade mark is that it is a badge of origin.
2) ingredients of the offence are contained in s 92.
- intention to infringe a registered trade mark is not an ingredient of the offence.
- use of trade mark as an indication of trade origin is an ingredient of s 92 offences.
- there must be a civil infringement before there can be an offence under s 92.
- the test is how the use of the sign would be perceived by the “average consumer”
of the type of goods in question.
3) s 92(5) TMA defence includes that D believed on reasonable grounds that either:
a) no relevant trade mark was registered or
b) his use of the sign did not infringe a registered trade mark of which he was aware.
4) the burden of proof in a s 92(5) TMA defence was on D on the balance of probabilities.
5) reverse burden of proof in s 92(5) TMA was compatible with article 6(2) ECHR.
- P not required to prove intent to infringe a registered trade mark.
- s 92(5) TMA requires D to have acted honestly and reasonably believed goods were genuine.
Surviving points from Court of Appeal:
6) s 103 – “in the course of trade” – wide definition – can include use on a single article.
7) validity of the registration of a trade mark cannot be determined in a criminal trial.
undefined: unpaid
Related case digests
- Torbay Council v Satnam Singh (1999) 163 JP 744 - Ss 92(1) & (5) TMA.
- Teletubbies. 1) not necessary to prove knowledge of or intent to infringe a registered trade mark. 2) defence of reasonable belief that logo is not a registered trade mark. - S v LB of Havering [2002] EWCA Crim 2558 - Ss 92(1) and (5) TMA – article 6(2) ECHR.
1) s 92(5) imposes a legal burden. – “to show” is synonymous with “to prove”. 2) s 92(5) does not relate to an essential ingredient of the offence under s 92(1). 3) elements of s 92(1) – only mental element, “intent” to cause loss, is hardly mens rea. 4) neither dishonesty, bad faith nor intent are an element of a s 92 offence. - no reference to “knowingly” in s 92 (1) (2) or (3). - s 92(5) defence is not confined to belief: it requires belief “on reasonable grounds”. 5) reverse burden of proof in s 92(5) is compatible with article 6(2) ECHR. - Arsenal Football Club plc v Reed [2003] EWCA Civ 696 - S 10 TMA.
1) only the national court, and not the ECJ, may make findings of fact. 2) relevant consideration is not whether there was trade mark use by D - relevant consideration is whether D's use affected the functions of the trade mark. 3) can be trade mark use even if immediate purchaser knows the goods are copies. - R v Rhodes [2003] FSR 147 - S 92(5) TMA.
- scope of statutory defence. 1) defence if D reasonably believed that the use of trade mark was not an infringement. - belief on reasonable grounds that goods were genuine. 2) defence under s 92(5) can relate to use of trade mark not just to manner of use. - R v McCrudden [2005] EWCA Crim 466 - S 92(5) TMA.
- statutory defence. 1) s 92(5) does not provide a general defence of good faith. 2) ignorance about the law or registered trade marks is no defence. - R v Thompson [2006] EWCA Crim 3058 - S 92 TMA.
- average consumer. - direction to jury must include: - that s 92 only applies when offending sign is used as an indication of trade origin - that the test is how the use of the sign would be perceived by the average consumer of the type of goods in question. - R (West Sussex County Council) v Kahraman [2006] EWHC 1703 (Admin) - S 92(5) TMA.
- defence of reasonableness applies equally to the experienced and the inexperienced. - Crown Prosecution Service v Morgan [2006] EWHC 1742 - S 92 TMA.
- disclaimer. - use of trade mark sign as an indication of trade origin is essential ingredient of offence. - but, sign can indicate trade origin of product even it is stated to be a replica. - sign indicates trade origin to subsequent, as well as immediate, purchasers. - R v Boulter [2008] EWCA Crim 2375 – Ss 10 and 92 TMA.
1) no criminal offence under s 92 unless civil infringement under s 10. 2) infringement of trade mark does not require likelihood of public confusion where identical trade mark used for identical goods. 3) poor quality of goods bearing trade mark did not prevent trade mark use. - likely to be trade mark use unless trade mark used only for descriptive purpose. - R v Gilham [2009] EWCA Crim 2293 – Ss 16(3)(a) and 296ZB CDPA.
- circumvention of effective technological measures designed to prevent copyright infringement. 1) individual still images from a DVD shown on a television screen are themselves artistic works protected by copyright. - even if the RAM of a game console at any time is not a substantial copy, the image on screen is. 2) the “little and often” point. - playing a counterfeit DVD on a games console results in the making of a substantial part of the game, even though at any time there is in the RAM and on screen only a very small part of the copyright work. 3) complicated copyright issues should be dealt with by specialist judges in the Chancery Division. - Stockton-On-Tees BC v Frost [2010] EWHC 1304 (Admin) – S 92 TMA – s 107 CDPA.
- dealing in counterfeit goods. 1) for D to prove defence under s 92(5) TMA as to her knowledge and belief whereas, under s 107 CDPA, it is for P to prove that D had reason to believe the goods were infringing copies. 2) no reasonable grounds for D to believe goods are not counterfeit when D previously warned they might be counterfeit, purchased them from lock-ups, did not have receipts and paid substantially less than their retail price. - R v Malik [2011] EWCA Crim 1107 – S 92 TMA.
- no conflict between R v Johnstone and R v McCruden. - s 92(5) TMA requires D to have acted honestly and reasonably believed goods were genuine. - no general defence of good faith in s 92(5) TMA. - s 92(5) TMA requires a subjective belief by D and objectively reasonable grounds for him to rely upon.