R v King (Elise)

Date

19 March 2003

Legislation

Trade Marks Act 1994, ss.92(1)(b) and 92(5)

Keywords

counterfeiting; criminal trade mark prosecutions; defences

Counsel

J. Wilcox for the prosecution, A. Roughton for the defendant

Solicitors

unknown

Judge

Mr Recorder P.W. Clarke QC

Court

Crown Court (Guildford)

Reported

unreported.

Summary

King was prosecuted for four offences contrary to s92(1)(b) of the Trade Marks Act 1994 relating to items seized from her market stall bearing the signs Hackett, Hilfiger, Nike and Adidas.

Trading Standards officers seized some 155 counterfeit items from a stall run by Mrs King. King elected for trial at the Crown Court and was committed from the magistrates. The defence case admitted that the infringements constituted civil infringements but took issue with the evidence tendered by the expert witnesses for the various brands concerned. The prosecution was then required to make further disclosure in respect of the trade witnesses including disclosure of any material that they had used to reach the opinion that the goods were counterfeit.

In cross-examination each of the trade witnesses was questioned as to whether the garments concerned were part of rogue batches which had been produced at authorised factories. Each witness denied this allegation.

Mrs King's evidence was that she obtained garments in the main from a Mr John Healy who she lived with and that she had been assured by Mr Healy that all garments she received from him were genuine. She indicated that she carried out no further checks and that her business had a turnover of £200,000 per annum.

The judge gave a ruling in respect of the scope of the defence under s.92(5) of the Trade Marks Act 1994 as follows:

• The judge considered the cases of Torbay Council v Singh and R v Keane concerning the scope of the defence. He concluded that, although there were reasons to interpret s.92(5) as being narrow in scope, the correct conclusion was that, this being a criminal matter, if there was any duality on the authority on the matter it should be construed in favour of the defendant and therefore the direction he should give to the jury was that the defence was wide.
• He also considered R v Johnstone (in the Court of Appeal) and stated that the burden of proving a defence under s.92(5) was on the defence on the balance of probabilities and was both an evidential and legal burden.

NB: The judge’s findings on these points must be read subject to the later case of R v Johnstone (House of Lords).

The jury convicted Mrs King after being given a majority direction and she was fined £4,000 in sentence and ordered to pay a contribution of £15,000 to the prosecution costs. The judge also ordered confiscation of the items seized.