Goods authorised by the trademark holder for manufacture but not for sale fell within section 92(1) of the trade Marks Act 1994
The Appellants were charged with offences contrary to section 92(1) of the Trade Marks Act 1994 ("the Act"). This was an interlocutory appeal concerning the interpretation this section.
The Appellants were involved in the bulk importation and sale of goods which bore the trademarks of well-known brands. A proportion of their goods had originally received legitimate authorisation to be manufactured, however their subsequent sale was not authorised by the trade-mark owner.
The causes of the non-authorisation of sale had been varied, the Appellants described these types of goods as appearing on the "grey market".
Section 92(1) of the Act states the following:
"A person commits an offence who with a view to gain for himself or another, or with the intent to cause loss to another, and without the consent of the proprietor –
Applies to goods or their packaging a sign identical to, or likely to be mistaken for, a registered trade mark or
Sells or lets for hire, offers or exposes for sale or hire or distributes goods which bear, or the packaging of which bears, such a sign or
Has in his possession, custody or control in the course of a business any such goods with a view to the doing of anything, by himself or another, which would be an offence under paragraph (b)."
The Appellants submitted that the expression "such a sign" in subsection 1(b) refers back to subsection 1(a) which therefore means that subsections (b) and (c) only applied to goods where the relevant trademark had been applied without the consent of the proprietor. Goods on the "grey market" had the original trademark applied with the consent of the proprietor and therefore fell outside the scope of section 92.
The Appellants' reading of paragraph (b) was strained. "Such a sign" in (b) means a sign such as described in (a). The sign described in (a) is a sign which is "identical to, or likely to be mistaken for, a registered trade mark". Signs having a provenance on the grey market are caught by this expression. The offences under section 92 were not cumulative but separate. The mental element of "a view to gain or intent to cause loss" is applicable to all subsections. Subsection (a) makes it an offence to apply such a mark without the consent of the proprietor plus the mental element. Subsection (b) makes it an offence to sell goods bearing the trade-mark without the consent of the proprietor plus the required mental element. Each offence stands alone.
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