Defence to infringement imposes legal not evidential burden, rules court

United Kingdom

In Sliney v London Borough of Havering, the Court of Appeal has held that, in cases involving a criminal charge of unauthorized trademark use, a defendant relying on the defence in Section 92(5) of the Trademarks Act 1994 is under a legal, rather than evidential, burden to prove that the defence is made out.

Roger Sliney, a sole trader, was prosecuted for dealing in counterfeit goods - or, more technically, for unauthorized use of a trademark contrary to Section 92(1)(c) of the Trademarks Act. He based his defence on Section 92(5) of the act, which states that:

"[i]t is a defence for a person charged with an offence 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 trademark."

As a preliminary issue, the Crown Court ruled that Section 92(5) imposes a legal or persuasive, rather than an evidential, burden on the defendant. This means that the defendant has to prove to the jury that, on a balance of probabilities, his defence is made out; it is not enough for the defendant to show that the defence is a possibility. The court also ruled that the fact that the section imposes this type of burden does not lead to any contravention of the Human Rights Act 1998. Sliney disagreed and appealed.

The Court of Appeal upheld the lower court's preliminary ruling and sent the case back for final determination. The Section 92(5) defence will, therefore, be decided on a 'legal burden' basis. The appellate court reasoned that each case should be decided on its merits and listed a number of public policy reasons to back up its findings in this case, including:

"the enormous (if not, in some cases, insuperable) obstacles for trading standard departments if the burden imposed by Section 92(5) on the accused was to be treated as only an evidential one."

Tom Hope, Solicitor, London

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