The defendants pursued an interlocutory appeal. They were being prosecuted inter alia for the sale of items manufactured elsewhere under trade mark licence, but then imported within the EU. They argued that the criminal offence did not apply since the marks had been correctly applied, even though the sales were not authorised.
Held: The appellants’ reading of the section was strained and unnatural: ‘ It requires one to read ‘sign’ in (a), which is incorporated into (b), as ‘which bears a sign, so applied’, or at least as ‘such a sign, so applied’.’ The wording was not ambiguous.
‘it is, on any view, unlawful for a person in the position of the defendants to put grey goods on the market just as it is to put fake ones there. Both may involve deception of the buying public; the grey market goods may be such because they are defective. The distinction between the two categories is by no means cut and dried. But both are, in any event, clear infringements of the rights of the trade mark proprietor. Defendants who set out to buy up grey market goods to make a profit on re-sale do so because the object is to cash in on someone else’s trade mark. If such be proved, they have scant claim to a beneficent construction of the Act. As it is, its ordinary reading plainly means that, unless they have the statutory defence, they have committed an offence.’
Judges:
Lord Neuberger, President, Lord Mance, Lord Sumption, Lord Hughes, Lord Hodge
Citations:
[2017] UKSC 58, UKSC 2017/0006
Links:
Bailii, Bailii Summary, SC, SC Summary, SC Summary Video, SC 20170619 am Video
Statutes:
Jurisdiction:
England and Wales
Citing:
Cited – 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 . .
Appeal from – Regina v C and Others CACD 1-Nov-2016
The court considered the existence of criminal liability under the 1994 Act for those importing from outside the EU and selling within the EU items marked with trade marks but not manufactured by them (counterfeits) or licensed by the trade mark . .
Lists of cited by and citing cases may be incomplete.
Crime, Intellectual Property
Updated: 04 September 2022; Ref: scu.591360
