The court was asked if the section 92(5) defence applied where the defendant does not know of the existence of the registered trade mark in question.
Held: The defence is not available in such a case. The court noted that section 92(5) speaks of a reasonable belief that the ‘manner’ of use of the sign did not infringe ‘the registered trade mark’. This presupposed an awareness by the defendant of the existence of the registration against which he can match his manner of use of the allegedly infringing sign. The test of whether a Trade Mark offence has been committed by a trader selling goods is whether or not the infringing goods have been offered for sale, and does not depend upon any test of whether the trader was aware of the infringement or whether he had been diligent in finding an answer. The defence related only to whether the manner of use of the mark was reasonable.
Judges:
Auld LJ
Citations:
Times 05-Jul-1999, [1999] EWHC Admin 553, [1999] EWHC Admin 535, [1999] 2 Cr App R 451
Links:
Statutes:
Trade Marks Act 1994 92(1) 92(5)
Cited by:
Applied – Regina v Keane CACD 2001
. .
Doubted – Regina v Johnstone HL 22-May-2003
The defendant was convicted under the 1994 Act of producing counterfeit CDs. He argued that the affixing of the name of the artist to the CD was not a trade mark use, and that the prosecution had first to establish a civil offence before his act . .
Doubted – Regina v Rhodes CACD 2002
Andrew Smith J: ‘No doubt in many cases the fact that a trader could ascertain whether a trade mark was registered by searching the register will make it extremely difficult to establish a belief involving ignorance of a registered mark is held on . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property, Crime
Updated: 28 May 2022; Ref: scu.139799
