Is a bad rip off a defence in a trade mark infringement? Evidently not.

According to a recent decision of the Court of Appeal in the case of R v Boulter (Gary) –  a victory for brand owners over counterfeiters! Police had seized from Boulter a stock of counterfeit and pirated goods including CDs and DVDs (no less than 1640 feature film DVD’s, 457 pornographic DVD’s and 232 compact discs), all of which featured identical copies of the EMI registered trade mark. 

Boulter was convicted under section 92 TMA which makes it a criminal offence to sell goods which bear (including on the packaging) a sign identical to, or likely to be mistaken for, a registered trade mark.  Boulter appealed against his conviction.  His argument was that the quality of his counterfeit goods was so poor that consumers would not actually think that they originated from EMI.  Because consumers were not likely to be confused about the origin of his goods, there was no likelihood of confusion as required by section 10(2) TMA.  In the earlier case of R v Johnson, the House of Lords had decided that to be convicted of an offence under section 92, there must first be trade mark infringement under section 10.  Boulter argued that, as there was no likelihood of confusion about the origin of his goods, there was no trade mark infringement under section 10(2).  Therefore, there could be no offence under section 92.

The decision

The Court of Appeal dismissed his appeal.  They said that it was section 10(1) that was relevant in this case as Boulter had used a sign which was identical to EMI’s registered trade mark on goods which were identical to those for which the mark was registered.  Likelihood of confusion was not a requirement of section 10(1).  There was trade mark infringement under section 10(1) and so Boulter could be convicted under section 92.  The court went on to say that even if section 10(1) had required a likelihood of confusion, Boulter could not rely on poor quality counterfeiting as a means of showing that likelihood of confusion was not a possibility.  There was no foundation for this under trade mark law and it would open the door to people like Mr Boulter selling his wares as genuine fakes. 

The decision in this case is likely to have been motivated by the courts distaste of counterfeiting activities and Boulter’s attempts to mount a spurious argument to avoid culpability.  It marks a victory for brand owners in the ongoing fight against counterfeiters and those attempting to trade on the back of their hard earned goodwill.

Patricia Jones, of ACID Accredited law firm Hammonds said, “Under the Trade Marks Act 1994 (TMA), a trade mark will be infringed where a third party uses in the course of trade, a sign which is either identical to the registered trade mark for identical goods or services (section 10(1)); or identical to the registered trade mark for similar goods or services or similar to the registered trade mark for identical or similar goods or services where there exists a likelihood that consumers will be confused about the origin of the third party’s goods or services.  Consumers must be confused into believing that the third party’s goods or services originate from the trade mark owner (section 10(2)).”

Patricia Jones Phd, Hammonds