It will come as no surprise to our readers to learn that the Criminal Division of the Court of Appeal has been dealing with a conviction for criminal trade mark infringement and an appeal thereof. The individual defending himself against this conviction was one Gary Boulter who had been caught with a stash of 1,640 DVDs of feature films, 457 DVDs of pornography and 232 compacts discs, all of which featured infringing logos. What may surprise many of you is the line of argument that Mr Boulter ran in his appeal against his conviction. The logos involved were those of EMI and “other companies of similar repute”. Mr Boulter's defence was that the material bearing the trade marks was of such poor quality that there was no likelihood of the public being deceived or confused.

It is worth noting that it was not the quality of the films, pornography or music on the CDs that was of poor quality but rather the logos which constitute the marks.

You will be glad to know that there are no more surprises to spring on you in reporting this case because, as you might hope and expect, the Court dismissed the application.

In its judgment, the Court spent time clarifying what is required to establish an infringement under the Trade Marks Act 1994 (the Act).

Under section 10(1) of the Act which deals with the same mark applied to the same goods there is no need to prove that a likelihood of confusion exists.

Under section 10(2) of the Act which deals with similar marks applied to similar goods; similar marks applied to the same goods; and the same mark applied to similar goods it is necessary for a likelihood of confusion to be proved.

Despite Mr Boulter’s claims and the poor quality of the marks the Court held that the marks on the goods in Mr Boulter’s possession were identical to the registered marks of EMI and the other wronged parties, and proceeded on the basis that present case was a section 10(1) case.

The Court then went on to satisfy itself in respect of the other tests required to establish liability for a section 10(1) case, namely:

  1. that the goods in Mr Boulter’s possession to which the infringing marks had been applied where identical to the goods for which those trade marks were registered; and
  2. that Mr Boulter held those goods in the course of his trade.

The Court held that he case was indeed a section 10(1) case, that there was therefore no need to establish a likelihood of confusion and that the tests for liability for a section 10(1) case had been satisfied. The Court therefore dismissed the appeal having found that Mr Boulter was liable for infringement. In making this judgment, the Court commented that it could not conceive that Parliament would have intended to create a situation where a defendant could escape liability on the basis that the quality of the infringing mark was so poor that it would not be likely to cause confusion.

Mr Boulter’s attempt was not entirely in vain however as the Court noted that his attempted claim that the quality of the counterfeiting was so poor that it was not likely to cause confusion could potentially provide a valid defence. However unfortunately for Mr Boulter the Court found that there was no foundation for this defence in this case.