R v C & Ors

Under section 92(1) of the Trade Marks Act 1994, the requirements of acting for gain or to cause loss, and without the proprietor’s consent, apply independently to each specified act. In section 92(1)(b), “such a sign” refers to a sign identical to, or likely to be mistaken for, the registered trade mark. It does not require that the sign was originally applied without consent.

Accordingly, the criminal offence may extend to the commercial sale or possession of goods bearing an authorised mark where their later disposal occurred without the proprietor’s consent, provided the remaining statutory elements, including civil infringement, are proved. The section is not confined to goods that are counterfeit from manufacture.

The appellants, a company selling branded shoes and clothing and persons involved in its management, faced allegations under section 92(1)(b) of the Trade Marks Act 1994. Some goods were alleged to be counterfeit. Others were alleged to have been manufactured by authorised factories but later sold without the trade mark proprietors’ authority.

At a preparatory hearing, Judge Plumstead at the Crown Court at St Albans rejected the appellants’ argument that section 92 criminalised only goods on which the mark had been applied without consent. The appellants challenged that ruling. The central issue was whether unauthorised commercial dealings in such goods could fall within section 92(1)(b) or (c).

1. Appeal dismissed. The Crown Court judge correctly held that section 92 of the Trade Marks Act 1994 is capable of criminalising the alleged sale of goods manufactured with authority but subsequently disposed of without the proprietor’s consent.

2. The opening words of section 92(1), requiring an act for gain or with intent to cause loss and without the proprietor’s consent, govern each of paragraphs (a), (b) and (c). In section 92(1)(b), the expression “such a sign” refers back only to the sign described in paragraph (a): one identical to, or likely to be mistaken for, a registered trade mark. It does not incorporate the act of applying the sign.

3. The appellants’ construction would impermissibly rewrite the provision. A sign on goods may be identical to the registered trade mark even if it was initially affixed with the proprietor’s authority. The court rejected any distinction between “identical with” in section 10 and “identical to” in section 92.

4. Although civil infringement under section 10 and criminal liability under section 92 are distinct, section 92 forms part of the Act’s overall scheme. Following Johnstone [2003] UKHL 28, proof of the criminal offence requires proof of civil infringement. The court also treated Genis [2015] EWCA Crim 2043 as binding authority that unauthorised “side-door” disposals by licensed factories can infringe the proprietor’s rights for the purposes of section 92.

5. Potentially difficult or harsh applications did not create statutory ambiguity. The prosecution must prove every element to the criminal standard, and section 92(5) supplies a reasonable-belief defence. The court did not determine the position of parallel imports or other hypothetical cases outside the alleged facts.

• Court of Appeal (Criminal Division): Leave was granted and the appeal was dismissed. The court upheld the preparatory ruling on the construction of section 92 of the Trade Marks Act 1994.
• Crown Court at St Albans: Judge Plumstead ruled at a preparatory hearing that the prosecution’s construction of section 92 was correct.