Poor reproduction of logo is no defence

United Kingdom

In R v Boulter ([2008] EWCA Crim 2375, October 7 2008), the Criminal Division of the Court of Appeal of England and Wales has dismissed an application for leave to appeal against a conviction for criminal trademark infringement. 

The police seized from the defendant, Gary Boulter, a haul of 1,640 DVDs of feature films, 457 DVDs of pornographic material and 232 CDs which bore copies of logos registered by EMI and "other companies of similar repute". Boulter, having pleaded guilty to 19 counts of unauthorized use of a trademark contrary to Section 92(1)(c) of the Trademarks Act 1994, applied for leave to appeal against his conviction, arguing that the material bearing the trademarks was of such poor quality that there was no likelihood of the public being deceived or confused (it was not the quality of the reproduction of the films and music that was poor, but the reproduction of the logos themselves).

Unsurprisingly, the court dismissed the application based on the following grounds:

  • In the case of an alleged infringement under Section 10(2) of the act (similar marks/similar goods, similar marks/same goods or same marks/similar goods) giving rise to criminal liability under Section 92, a likelihood of confusion must be proved. However, no likelihood of confusion must be proved for liability to arise under Section 10(1) (same marks/same goods).
  • This was a Section 10(1) case. The trademarks, however badly they may have been copied, were identical to those registered by the various trademark owners. Since the marks were identical and the goods in Boulter's possession in the course of his trade were identical to the goods for which the trademarks were registered, liability resulted.
  • Parliament could not be taken to have intended that, where there was straightforward counterfeiting of goods and of a registered trademark, a defendant could escape liability by showing that the quality was so poor that it would not give rise to any risk of confusion. This would provide a let-out for counterfeiters selling goods as ‘genuine fakes’.
  • Boulter sought to raise a novel defence. He argued that even though this was a straight counterfeiting case and there was no question of the marks being used for descriptive purposes, the fact that the quality of the counterfeiting was so poor as not to be likely to cause confusion potentially amounted to a defence. However, there was simply no foundation for such a defence. 
The court has obviously reached the right decision. However, a well-advised counterfeiter may now see an advantage in making sufficient small changes in the counterfeit mark to require the court to conclude that it is merely highly similar. It would thus be necessary for the prosecution to go through the inconvenience of establishing a likelihood of confusion before it can obtain a conviction.
Jeremy Phillips, IP consultant to Olswang, London

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