Drain, R (On the Application Of) v Birmingham Crown Court

Section 97(3) of the Trade Marks Act 1994 does not require forfeiture whenever the court is satisfied that a relevant offence has been committed. The words “shall only if” impose a necessary condition, not an unconditional duty. The court therefore retains a discretion whether to order forfeiture.

Forfeiture proceedings are civil proceedings concerning goods, and may proceed without a conviction where the relevant offence is proved on the balance of probabilities. The statutory scheme is not disproportionate merely because the goods are forfeited after an acquittal or because civil remedies are available. A judicial review challenge will ordinarily fail where proportionality was not raised below and would not have affected the outcome.

The claimant sought judicial review of a forfeiture order made by Birmingham Crown Court under section 97 of the Trade Marks Act 1994. The underlying criminal trial concerned goods bearing signs identical or similar to registered trade marks. The jury failed to agree, the prosecution offered no further evidence, and not guilty verdicts were entered.

The Crown Court nevertheless found, on the balance of probabilities, that a relevant offence had been committed in relation to the goods and ordered forfeiture. The claimant argued that the court had been required to consider proportionality under Article 1 of Protocol 1 to the Convention and that section 97(3) either conferred a discretion or was incompatible with that right.

1. Jurisdiction. The Administrative Court had jurisdiction under section 29(3) of the Senior Courts Act 1981. A forfeiture application under section 97 is a separate civil proceeding concerning goods, rather than an issue between prosecutor and defendant on the indictment. The court relied on R v Harrow Trading Standards ex parte UNIC Centre Sarl [2000] 2 All ER 449.
2. Construction of section 97(3). The words “shall make an order ... only if” mean that the court shall not make a forfeiture order unless satisfied that a relevant offence has been committed. They do not require an order whenever that condition is met. The court therefore has a discretion whether to order forfeiture.
3. Effect of acquittal and standard of proof. Section 97 does not require a conviction. A relevant offence may be established in the forfeiture proceedings on the balance of probabilities. The order is directed to the goods, not to the culpability of a particular person.
4. Convention proportionality. The court did not need to determine whether forfeiture constituted deprivation of possessions or control of property. Unlike the statutory provision considered in R v Waya [2013] 1 AC 294, section 97(3) did not impose an unconditional duty requiring words to be read into it. The statutory purpose was to prevent infringing goods returning to circulation. The availability of civil remedies, the claimant’s acquittal, the value of the goods and the possibility of licensing did not make forfeiture disproportionate on the facts.
5. Disposition. Although the Crown Court judge had proceeded on the mistaken basis that she had no discretion, proportionality had not been argued or supported by relevant material below, and consideration of it would not have altered the result. The claim for judicial review and the application for a declaration of incompatibility were refused.

The judgment does not state a prior appellate decision in the same proceedings. It records that an application to the Court of Appeal Criminal Division was rejected for want of jurisdiction, and that judicial review was then brought in the Administrative Court.