Wakefield & Anor, R. v

Trade Marks Act 1994 section 92 creates the substantive trade-mark offence. Its partnership provisions govern the procedure and partner liability where a partnership is implicated. Where the partnership was guilty when the offence was committed but no longer exists at trial, the individual partners may be prosecuted under section 101(4). A prior conviction of the partnership is unnecessary. The jury must decide whether the partnership was guilty, including any reasonable-belief defence under section 92(5), by reference to the conduct and state of mind of those who committed the alleged acts.

Expert evidence about the nature of allegedly bootleg goods and the absence of proprietors’ consent is admissible where it can assist the jury on consent and the reasonable-belief defence.

The appellants traded as partners in Bionic Records. Following a purchase of compact discs at the Reading Festival in August 1999, trading standards officers seized stock suspected to be unauthorised recordings. The appellants accepted that the discs were bootlegs but contended that their trade was permissible.

After the partnership had been wound up, the Crown Court at Reading amended the indictment. It alleged that Bionic Records had committed offences under the Trade Marks Act 1994, for which the individual partners were liable. Following a seven-day trial, the appellants were convicted on six counts and sentenced to four months’ imprisonment concurrently.

They appealed against conviction, challenging the amended indictment and the admission of expert evidence concerning bootleg recordings and trade-mark proprietors’ consent.

1. Appeals dismissed. The indictment properly charged one substantive offence under Trade Marks Act 1994 section 92, with the appellants proceeded against as partners under section 101(4). It was not duplicitous.

2. Section 92 was the offence-creating provision. Section 101 addressed the procedural position where an alleged offence involved a partnership. Although the partnership had ceased to exist by trial, the prosecution could establish that it had been guilty when the offences were committed and then proceed against the partners under section 101(4).

3. Section 101(4) required proof that the partnership was guilty; it did not require a prior conviction of the partnership. The jury had been directed to determine that issue. In doing so, it properly considered whether the section 92(5) reasonable-belief defence was made out by reference to the actions and relevant state of mind of the persons who performed the acts alleged on behalf of the partnership.

4. The expert evidence was relevant and admissible. Evidence identifying the discs as bootlegs and stating that major trade-mark proprietors did not consent to such recordings could assist the jury both on absence of consent and on whether the appellants reasonably believed that use of the signs was not an infringement. Any distinction between copyright and trade-mark matters had been adequately explained and could not have confused the jury.

5. The convictions were safe. The appellants were ordered to pay the prosecution’s appeal costs of £1,250 equally.

• Court of Appeal (Criminal Division): Appeals against conviction dismissed in [2004] EWCA Crim 2278.
• Crown Court at Reading: On 6 June 2003, following a seven-day trial, both appellants were convicted of six counts of unauthorised use of trade marks and sentenced to four months’ imprisonment concurrently on each count.