R v James Rupert Isaac

Date

22 April 2004

Legislation

ss.10(1), 92(1)(b), and 92(5) TMA 1994

Keywords

Trade Marks; Infringement; Trade Mark Use; Elements of the Criminal Offence; Jury Directions

Counsel

B Douglas-Jones for the Appellant, C Fender for the Crown

Solicitors:

Unknown

Judges:

Pill LJ, Poole J, Sir Charles Mantell

Court:

Court of Appeal (Criminal Division)

Reported:

(2004) 168 J.P. 417, (2004) 168 J.P.N. 617, [2004] EWCA Crim 1082, (2004) 27(6) I.P.D. 27, 064.

Summary

The Defendant (D) was a market trader selling clothing, namely sweatshirts bearing the logos "BOSS" and "POLO". Following the purchase by a Trading Standards Officer of 2 sweatshirts from the D, the D was convicted of 2 counts of selling goods bearing a sign identical to the registered trade mark contrary to s. 92(1)(b) TMA 1994.

D in his defence had argued (under s.92(5)) that the sweatshirts bore no resemblance to the genuine trade mark items and that it had not been his intention to suggest to the public that they were genuine items. Further, he did not believe that he was using the signs as trade marks.

At the close of the hearing the Judge was supplied with a document headed "Draft Jury Directions” which had been agreed by both parties" Counsel.

The D appealed against his convictions on the ground that the direction given by the Judge to the Jury was inaccurate having regard to the need before a criminal offence can be established to prove trade mark infringement as defined in s.10(1) of the TMA 1994, and in particular that there had not been sufficient direction on the principle that the offending sign must be used as an indication of trade origin. It was argued that the draft direction given to the Judge were merely a template which Counsel for the D expected to have been elaborated by the Judge.

The direction which the Judge actually gave was as follows:

"…there can be no offence unless there has been an infringement. In relation to both of these counts the prosecution must make you sure first that the D was using the sign in the course of trade….to put it another way, what was the D’s intention in using the sign and did it prejudice the function of the trade mark?"

Decision:

• If draft Jury Directions are to be submitted to a Judge, and particularly in a technical area of law such as this, it is important that care is taken in their preparation and that they are not only as succinct as may be but that they are accurate and no attempt will be made to go beyond them.
• The direction given to the Jury with its reference to “use in the course of trade” and “prejudice the function of a trade mark” was not sufficiently clear to permit the conviction to stand.
• The Jury must be directed that a criminal offence is committed only when as a first element the elements offending sign is used as an indication of trade origin as understood in accordance with s.10(1) TMA 1994 (and as supported in·R v Johnstone). On the evidence, there was substantial room for argument as to whether that was the case and the jury should have had a clear direction on the topic.
• To put directions in question form is not always a good method to adopt.

Accordingly, the appeal was allowed and the 2 convictions were quashed (the Judges refused to direct a re-trial).