Crown to prove civil infringement before criminal offences

In Regina v Johnstone, the House of Lords has ruled that the prosecution has to prove that the use of a sign is a civil infringement under the UK Trademarks Act 1994 before proving criminal offences under the act.

The police discovered CDs of bootleg recordings of well-known performers at Robert Johnstone's house in 1997. Because the CDs bore the name of the artists whose performances were recorded and these names were registered trademarks, the police charged Johnstone with having committed criminal offences under Section 92 of the Trademarks Act.

At trial in 1999, Johnstone argued that the Crown must prove, in accordance with Sections 9 to 11 of the Trademarks Act, that he infringed the marks before deciding on the alleged offence under Section 92. Johnstone contended that his use of the performers' names on the CDs was not use as an indication of trade origin and therefore did not infringe the performers' rights under Section 11(2). The judge rejected this argument. Johnstone appealed.

The Court of Appeal (Criminal Division) allowed Johnstone's appeal, ruling that the lower court should have given him the opportunity to have his defence considered by the jury. The Crown appealed.

The House of Lords dismissed the appeal. It held that because use of a sign as an indication of trade origin is an element of the offences under Section 92, the prosecution has to prove such use. Accordingly, the House of Lords ruled that Johnstone was entitled to run the defence provided by Section 11(2) and, as this had been denied, the conviction was unsafe.

Examining the facts of the case, the House of Lords concluded that the use of the performers' names on the CDs was not trademark use. It found that if (i) the name of an artist or group affixed to a CD and displayed on the packaging is exclusively an indication of the performer's name, and (ii) the use of the performer's name is not likely to be understood as indicating any other connection between the performer and the CD, then such use is not an indication of trade origin of the CD itself. Whether particular labelling and packaging satisfies this test, and consequently are innocuous for trademark purposes, is a question of fact in each case.

In reaching its conclusions, the House of Lords had the benefit of the European Court of Justice's judgment in Arsenal v Reed (although it did not refer to the judgment of the Court of Appeal in the same case). The House of Lords referred to the Arsenal decision as (i) re-affirming the purpose of a trademark as a guarantee of trade origin, and (ii) confirming that the exercise of the right is reserved to cases where the third party's use of the mark "is liable to affect" that purpose. However, it reached a different conclusion of fact in relation to a fairly similar use of trademarks on goods sold, or intended for sale, otherwise than under the authority of the mark owners.

For a discussion of the Arsenal Case, see Arsenal win on the replay.

Mark Lubbock, Ashurst Morris Crisp, London