Nottinghamshire County Council v Woolworths PLC

Date

18 May 2006

Legislation

92(1), 92(5), 92(6) Trade Marks Act 1994

Keywords

Trade mark offences; defences; reasonable belief; deliberate counterfeiting; inadvertent infringement; likelihood of mistake; reasonable grounds

Counsel

Mr Bennett for the prosecution and Mr Harbottle for the defence,

Solicitors

Willoughy & Partners for the defence, prosecution unknown

Judge

District Judge Harris

Court

Newark Magistrates Court

Reported

Unknown

Summary

The Trading Standards department of Nottinghamshire County Council brought an action against Woolworths Plc for infringement of s92(1)(a)(b) Trade Marks Act 1994.

Woolworths were selling football shirts during the final stages of “Euro 2004”. It was alleged by Trading Standards that these shirts carried a badge which was likely to be mistaken for the FA Crest. This badge consisted of a Shield Emblem including three Lions and a George Cross.

Woolworths claimed that their badge would not be mistaken for the FA Crest and further they were not using their badge as a trademark. Woolworths also attempted to rely on the s92(5) defence, arguing that staff could reasonably believe that the badge did not infringe.

Decision:

• The judge held that the correct test for s92(1) infringement is to look at the two marks side by side excluding any surrounding circumstances and simply decide whether the new mark could be mistaken for the original.
• It was held on the facts that based on the test of an average consumer of the goods in question the differences between the marks were so significant that there was no likelihood of the two signs being confused.
• Consequently Woolworths could then successfully claim that they were not using their badge as a trademark. Instead the judge held that rather than confuse the Woolworths shirt for official FA merchandise the average consumer of the goods in question would see the item as a mere badge of allegiance. Thus no action under s92 could be brought.
• The judge emphasized that criminal sanctions should only be invoked for the most serious civil infringements such as counterfeiting, whereas, inadvertent infringement such as this should be left to the civil courts.
• The judge commented that in order to prove the defence under s92(5) the subjective belief of the Woolworths staff wass not sufficient. According to the section, “It is a defence for a person charged under this section to show that he believed on reasonable grounds that the use of the sign in the manner in which it was used, or was to be used, was not an infringement of the registered trade mark”. Therefore it was not enough for the staff to rely on the assurances of an agent of Direct Sports and Leisurewear Limited “DSL”(the manufacturer of the shirts). The required standard of reasonable grounds would mean that Woolworths should have contacted the DSL or the Football Association directly.
• This case puts an end to the previous line of reasoning in R v Johnstone which had stated that nearly all civil infringement actions should be the subject of criminal prosecution. Instead there is now a distinction between intentional counterfeiting and inadvertent infringement. In addition it highlights the desirability of obtaining legal advice when attempting to rely on the s92(5) defence.