Summary

To make out an offence under s.92 Trade Marks Act 1994, the use of the trademark in question must be as an indication of trade origin. The reasonable belief defence under s.92(5) was available to an alleged offender whether or not they were aware of the existence of the relevant registered trademark.

Facts

Appeal by the Crown against the decision of the Court of Appeal as to the proper interpretation of s.92 Trade Marks Act 1994. The respondent ('J') was found in possession of copies of bootleg music recordings on compact discs. The discs were all labelled with the name of the performer or group. He was charged with 12 specimen counts in relation to compact discs bearing the trademark of various performers, such as "Bon Jovi", "U2" and "Rolling Stones". Subsequently, he pleaded guilty and was convicted of the false use or application of the trademarks in question in contravention of s.92(1)(c). The Court of Appeal ruled that J's conviction was unsafe since at trial he was not permitted: (i) to argue that his use of the trade marks did not amount to a civil infringement and therefore could not amount to a criminal offence; and (ii) to rely on the defence of honest and reasonable belief under s.92(5) of the Act.

Held

(1) It is implied in s.92 of the Act that the offending use of the trade mark must be use as a trade mark. Accordingly, s.92 only applies when the trade mark in question is used as an indication of trade origin. This is a question of fact to be proved by the prosecution. (2) Where the name of the performer or group referred to on the disc's labelling or packaging exclusively indicates the name of the person or band whose performance is recorded on the disc, that use would be descriptive only and not an indication of trade origin. (3) The defence of reasonable belief of non-infringement within s.92(5) of the Act is available whether a defendant is aware or unaware of the existence of a registered trade mark. (4) (Obiter) On the proper interpretation of s.92(5), the burden was on the accused to prove the relevant facts on the balance of probabilities. That interpretation is compatible with Art.6(2)European Convention on Human Rights.