Boulter, R. v

For an offence under section 92 of the Trademark Act 1994, the intended use must amount to civil trade mark infringement under section 10. Where the same mark is used for the same goods, section 10(1) applies and does not require proof of a likelihood of public confusion. That requirement belongs to section 10(2).

Trade mark use concerns use of the mark as a badge of trade origin rather than merely descriptive use. The reproduction of proprietors’ logos on counterfeit goods is use as badges of origin. Poor-quality copying, or an asserted absence of actual confusion, provides no defence to straightforward counterfeiting.

The applicant pleaded guilty at Bristol Crown Court to 19 counts of unauthorised use of a trade mark contrary to section 92(1)(c) of the Trademark Act 1994. A further 144 similar offences were taken into consideration.

Trading Standards officers and police had seized counterfeit CDs, DVDs and copying equipment from his home. The packaging bore copies of the logos of EMI and other proprietors. Before the pleas, the judge ruled that the alleged poor quality of the counterfeits could not provide a defence. After a Single Judge refused leave, the applicant renewed his application to appeal against conviction. The central issue was whether a lack of likely confusion prevented infringement in a straightforward section 10(1) counterfeiting case.

1. The renewed application for leave to appeal against conviction was dismissed. The Crown Court judge was right to rule that the alleged poor quality of the copied marks was immaterial.
2. Following R v Johnstone [2003] UKHL 28, criminal liability under section 92 depends on whether the intended use would infringe section 10 of the Trademark Act 1994. The relevant distinction is between sections 10(1) and 10(2). Section 10(2) requires a likelihood of public confusion, but section 10(1) does not where there is double identity: an identical sign is used in relation to identical goods.
3. The copied logos on the CDs and DVDs were identical marks used in relation to goods for which the marks were registered. The case therefore fell within section 10(1), not section 10(2). R v Issac [2004] EWCA Crim 1082, being a section 10(2) case, did not assist the applicant.
4. Trade mark use means use for the proper purpose of identifying and guaranteeing trade origin, rather than use merely to describe goods. The logos had no rational purpose other than to replicate badges of origin. The court approved the reasoning in Arsenal Football Club plc v Reed [2003] EWCA Civ 696: uncontrolled non-descriptive use of a registered mark impairs its origin-guaranteeing function even if there is no confusion.
5. A contrary rule would allow counterfeiters to market goods as obvious fakes and would undermine the statutory scheme. Section 92 also avoids the former difficulty of proving an intention to infringe where a trader disclaims authenticity. The court added that this judgment could exceptionally be cited if confusion arose about the distinction between sections 10(1) and 10(2).

• Court of Appeal (Criminal Division): dismissed the renewed application for leave to appeal against conviction.
• Bristol Crown Court: on 23 October 2007, following a ruling rejecting the proposed defence, the applicant pleaded guilty to 19 offences under section 92(1)(c) of the Trademark Act 1994.
• Single Judge: refused leave to appeal against conviction.