Isaac, R. v

For an offence under section 92 of the Trade Marks Act 1994, the prosecution must prove that the offending sign was used as an indication of trade origin. Whether it was so used is a factual issue, assessed by how the average consumer would perceive the use.

Where that issue is in dispute, the jury must receive a clear direction on it. A direction referring only to use in the course of trade and prejudice to the trade mark’s function does not adequately identify the necessary ingredient. A conviction founded on such an inadequate direction is unsafe.

The appellant, a market trader, was convicted at Peterborough Crown Court of two offences of selling clothing bearing signs identical to registered Boss and Polo trade marks, contrary to section 92(1)(b) of the Trade Marks Act 1994. The clothing was inexpensive and not genuine branded merchandise.

He contended that the signs were not used to suggest a genuine trade origin and that the jury had not been properly directed on trade mark infringement or on the statutory defence of reasonable belief. The central issue was whether the summing-up adequately required the jury to decide whether the signs had been used as indications of trade origin.

1. Appeal allowed. The convictions were unsafe and were quashed. The court declined to direct a retrial.
2. Section 92 of the Trade Marks Act 1994 criminalises conduct only where the offending sign is used as a trade mark, namely as an indication of the trade origin of the goods. That is an ingredient which the prosecution must prove. Whether the use has that character is a question of fact, assessed through the perception of the average consumer.
3. The court applied the reasoning in R v Johnstone [2003] 2 Cr App R 33. The law had not changed after the trial. It had simply been stated clearly in that decision. The jury should therefore have been directed expressly to decide whether the appellant’s use of the Boss and Polo signs was intended by him, or understood by the public, as a designation of origin.
4. The direction given was inadequate. It referred to use in the course of trade and to prejudice to the trade mark’s function, but did not clearly state the required proposition. There was substantial scope on the evidence for argument about trade-origin use. The defect also undermined consideration of the section 92(5) defence, which depended on a correct understanding of infringement.
5. The trial judge was not criticised, since he had been guided by agreed directions prepared by counsel. Nevertheless, every disputed ingredient of a criminal offence requires a clear direction. The omission meant that the jury might not have understood the approach required to the evidence.

• Court of Appeal (Criminal Division): Allowed the appeal and quashed the convictions: [2004] EWCA Crim 1082.
• Crown Court at Peterborough: On 25 April 2003, the appellant was convicted on two counts under section 92(1)(b) of the Trade Marks Act 1994 and fined.