Waterford Wedgwood Plc and Waterford Crystal Limited v David Nagil Limited and David Nagil

Date

24 July 1997

Legislation

Trade Marks Act 1994, ss 10(1), 10(4)(c)

Keywords

trade mark infringement; importation of goods; jurisdiction; goods in transit; innocent intention

Counsel

Mark Platts-Mills Q.C., Charlotte May, Anthony Martino

Solicitors:

Garretts; the Grangewood Partnership

Judge:

Sir Richard Scott, V - C

Court:

High Court (Chancery Division)

Reported:

[1998] F.S.R. 92.

Summary

The first defendant traded from premises in Richmond as Artistic Treasures and was controlled by the second defendant. The defendants sold counterfeit Waterford crystal to a firm in New York but argued that they acted throughout in good faith. Waterford sued them for both passing off and trade mark infringement.

The process by which the goods were ordered by the defendants was complex and comprised the following steps:

• the defendants ordered the goods from an Isle of Man company;
• it subsequently emerges that the Isle of Man company placed an order for crystal with a glass manufacturer in Cavan, Ireland, and subsequently presented counterfeit crystal produced by that company as being the Waterford crystal ordered by the defendants;
• the counterfeit crystal was shipped to Bilbao, Spain; and
• the crystal was shipped from Spain to New York via Felixstowe.

The defendant assured the New York buyer that the merchandise being delivered was direct from the Waterford factory, and was completely genuine.

The defendant asserted that he was completely innocent of any counterfeiting and did not know of the arrangements made by the Isle of Man company. The judge noted however that innocence is not a defence to an infringement claim.

An issue arose as to whether, when the goods came into United Kingdom territorial waters at Felixstowe, and were transferred to another ship, and left United Kingdom territorial waters en route to New York, they were first imported into and then exported from the United Kingdom and thus whether there was an infringement under

s. 10(4)(c) of the Trade Marks Act 1994.

The judge considered the exact course of dealings that had resulted in the goods being brought into the jurisdiction at Felixstowe and noted that the Defendants had only requested that they should be shipped from Bilbao to New York.

Decision

The judge considered Betts v. Neilson (1868) 3 ~Ch. App. 429, a patent case in which the allegedly infringing articles had been manufactured abroad and brought into England for the purpose only of exportation and held that importation means bringing the goods into territorial jurisdiction, even if only in transit. He thus concluded that there had been trade mark infringement by importation and exportation of the goods from Felixstowe.