R v Reed, Matthew

Date

1 December 1997

Legislation

Trade Marks Act 1994, s92

Keywords

directive; harmonisation; preliminary issues; reference to European Court of Justice.

Counsel

Mr R. Howard, Ashley Roughton

Solicitors

Unknown

Judge

HHJ Petre

Court

Chelmsford Crown Court

Reported

Unreported

Summary

Trial of preliminary issue.

Defendant argued that s.92 Trade Mark Act 1994 is inconsistent with the EU Directive on harmonisation of national trademark provisions (Dir. 89/104); was disproportionate; and was made in excess to the limited discretion allowed to member states by the Directive, and should therefore be disapplied.

Decision

The judge found that:

• the Directive explicitly did not require all aspects of national trade mark laws to be harmonised, only those which most directly affected the functioning of the internal market. He found that ss.92-97 TMA 1994 were not concerned with the functioning of the internal market and therefore were not the subject matter of the Directive.
• Recital 6 of the Directive did not disallow provisions concerning consumer protection to be contained in national trade mark law.
• There is no prohibition on the creation of criminal offences for misuse or infringement of registered trade marks in the Directive.
• The difference in phraseology used to describe "in the course of trade" and public "confusion" in the two provisions was semantic only.
• The maximum sentence is high, but the UK parliament is entitled to adopt such measures in areas such as this where they retain sovereignty.
  
  NB: Confirmed by CA in R v Johnstone.

The defendants further argued that s. 92(5) denied a defendant in criminal proceedings the defences available in civil proceedings - s.11(2), counterclaiming for invalidity (s.46), and counterclaiming for revocation for non-use (s. 47).

The judge held that it was entirely appropriate that such defences were unavailable.

The defendants applied to have the question referred to the ECJ and the judge declined as the answer was clear, a ruling would be slow to obtain, and the court was not in possession of the full facts in order to make the referral.

NB: Now see R v Johnstone.