R v M & Ors

[2017] UKSC 58

On appeal from: [2016] EWCA Crim 1617

LORD HUGHES: (with whom Lord Neuberger, Lord Mance, Lord Sumption and Lord Hodge agree)

1.                   This is an interlocutory appeal in a criminal case which concerns the correct construction of section 92(1) of the Trade Marks Act 1994 (“the 1994 Act”).

2.                   The appellants are a limited company and two individuals connected with its management. They are indicted for, inter alia, offences of unauthorised use of trade marks, contrary to section 92(1)(b) and (c) of the 1994 Act. No trial has yet been held, and the Crown case remains at this point a matter merely of allegation, which may or may not be proved. At a preparatory hearing in the Crown Court, they advanced a submission that part of what was alleged was, on any view, outside the terms of section 92 and no offence. Both the trial judge and the Court of Appeal (Criminal Division) rejected that submission. They renew it in this court.

3.                   What is alleged is that the defendants are engaged in the bulk importation and subsequent sale of goods such as clothes and shoes. The goods, or many of them, are said to bear what appear to be the trade marks of well-known brands, such as Ralph Lauren, Adidas, Under Armour, Jack Wills, Fred Perry or similar. The goods were manufactured abroad, in countries outside the EU.

4.                   Some of the goods in the possession of the defendants are said to have been manufactured by people who were neither the trade mark proprietor, nor authorised by the proprietor to make them. This first category of goods, the appellants describe as counterfeits in the true sense.

5.                   A significant portion of the remainder of the goods are, however, ones where there had originally been an authorisation of manufacture by the registered trade mark holder, whether by subcontract, licence or otherwise, but whose sale had not been authorised by him. They were thus sold, bearing the trade mark, without the consent of the owner of the mark. The causes of the non-authorisation of sale might be, it is said, various. Some garments might deliberately have been made by the factories in excess of the numbers permitted by the trade mark owner, so that the balance could be sold for their own benefit. Some might have been made in excess of the order without that original ulterior intention (indeed perhaps as precautionary spare capacity planned and approved by the trade mark owner), but then have been put on the market without his consent.…