R v Rhodes

Date

23 May 2002

Legislation

Trade Marks Act 1994 s.92(1) and s.92(5)

Keywords

trade mark offences; counterfeiting; reasonable and honest belief; defences

Counsel

I. Abrahim for Rhodes, S. Lovegrove for the Crown

Solicitors:

unknown

Judge:

Kay L.J. and Andrew Smith J.

Court:

Court of Appeal (Criminal Division)

Reported:

[2002] EWCA Crim 1390; [2003] FSR 9

Summary:

Rhodes pleaded guilty to six counts contrary to s.92(1) of the Trade Marks Act 1994 after a ruling on law by HHJ Dean QC. He managed a computer games shop in London and sold counterfeit Nintendo games bearing the Nintendo trade mark.

Rhodes wanted to advance a defence that the counterfeiting was so convincing that he believed on reasonable grounds he was selling genuine goods and accordingly had a defence under s.92(5). The judge ruled as a matter of law that this did not give rise to a defence relying on Torbay District Council v Singh [1999] 2 Cr App R 451.

Decision:

The Court of Appeal noted that the judge had not considered the later cases of R v Johnstone or R v Keane and his ruling on law needed to be revisited in the light of these cases.

The Court of Appeal concluded that:

• s.92(5) establishes a ‘broad general defence’ albeit one that is subject to the limitation that a person is deemed to know about any registered trade mark so that he cannot assert a defence that he was ignorant of it;
  
  
• in this case the appellant did not seek to assert that he was ignorant of the trade mark and so there was no reason that he could not have relied upon the defence;
  
  
• on the issue of whether there was any difference in principle between a trader having an honest belief that there was no trade mark and an honest belief that there was a genuine trade mark, the Court noted that Torbay District Council v Singh [1999] 2 Cr App R 451 stated that there was a difference in principle. However the court noted that, if a trader had engaged a reputable agent to search the trade marks register and the agent had made a genuine mistake, they would be uncomfortable in ruling out the possibility of a defence under s.92(5).

Accordingly his appeal was allowed and the convictions were set aside.

Note this case should be read subject to the principles laid down by the House of Lords in R v Johnstone.