Bad reproduction of logo = bad defence, rules CA

Every so often the IPKat reads an appeal against conviction for criminal trade mark infringement that he just knows is going to be hopeless. R v Boulter [2008] EWCA Crim 2375, a decision of the Court of Appeal, Criminal Division, England and Wales, was always going to be one such decision.

The police seized from Boulter a haul of 1,640 DVDs of feature films, 457 DVDs of porno and 232 CDs which bore on the packaging copies of logos of EMI and what the court described as "other companies of similar repute". Boulter, having pleaded guilty to 19 counts of unauthorised use of a trade mark contrary to the Trade Marks Act 1994 s.92(1)(c), applied for leave to appeal against his conviction, arguing that the material bearing the trade marks was of such poor quality that there was no likelihood of the public being deceived or confused. Lest you imagine that it was the quality of the reproduction of the films and music that was poor, the Kat must explain: it was the reproduction of the logos themselves that was of poor quality.

No doubt stifling their giggles and putting on suitably solemn faces, the Court (Lord JusticeToulson, Mr Justice Griffith Williams J and The Recorder of Winchester) dismissed the application. What they said, in a judgment delivered by Toulson LJ, was this:

* In the case of an alleged infringement under section 10(2) of the Trade Marks 1994 Act (similar marks/goods, similar marks/same goods or same marks/similar goods) giving rise to criminal liability under section 92, a likelihood of confusion had to be proved -- but no likelihood of confusion need be proved for liability under section 10(1) (same marks/same goods).

* This was a section 10(1) case and the trade marks, however badly they may have been copied, were identical to those registered by the various victims. 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 those trade marks were registered, liability resulted.

* Parliament could not be taken to have intended that, where there was straightforward counterfeiting of goods and of a registered trade mark, 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 the counterfeiter who sold his wares as "genuine fakes".

* Boulter was seeking to raise a novel defence that, even though this was a straight counterfeiting case and there was no question of the mark being used for descriptive purposes, the fact that the quality of the counterfeiting was so poor as not to be likely to cause confusion amounted potentially to a defence. There was simply no foundation for such a defence.

The IPKat is delighted to see that the Court of Appeal has managed to reach the right result even without his assistance. Merpel's a little anxious, though. She feels that the well-advised counterfeiter will 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, so that it will be necessary for the prosecution to go through the inconvenience of establishing a likelihood of confusion before they can obtain a conviction.
Bad reproduction of logo = bad defence, rules CA Bad reproduction of logo = bad defence, rules CA Reviewed by Jeremy on Wednesday, October 29, 2008 Rating: 5


  1. Is "well-advised counterfeiter" an oxymoron?

  2. The “genuine fakes” defence is not so far-fetched. In US law at least, a trademark cannot be used to protect functional elements of a product and a competitor is therefore entitled to reproduce a trademark for functional purposes so long as it takes reasonable steps to ensure that the consumer is not confused as to the source. Some cases have extended this doctrine to situations where the “function” in question is to satisfy the consumer’s aesthetic preference for products bearing the mark. For example, in Plasticolor v. Ford Motor Co. 713 F. Supp. 1329; 1989 U.S. Dist. LEXIS 5832. Plasticolor sold rubber floor mats bearing various Ford trademarks, such as FORD MUSTANG, moulded into the mat itself. The mats were sold with a cardboard header card with a large disclaimer stating that the mats were manufacturer by Plasticolor and not authorized or manufactured by Ford. On a motion for summary judgment, Judge Kozinski, now Chief Judge of the US 2nd Circuit Court of Appeals, held that if Plasticolor could establish on the facts that the disclaimer was effective as preventing consumer confusion as to source, Plasticolor would not be infringing. See also International Order of Job's Daughters v. Lindeburg & Co., 633 F.2d 912 (9th Cir. 1980), use of sorority emblem on jewelry has function of allowing purchasers to express their affinity; University of Pittsburgh v. Champion Prods., Inc., 566 F. Supp. 711 (W.D. Pa. 1983), name of university is functional element of shirts); Bi-Rite Enters., Inc. v. Button Master, 555 F. Supp. 1188 (S.D.N.Y. 1983), names of recording artists are functional elements of buttons. The doctrine of “aesthetic functionality” is not uncontroversial, but as these cases indicate it does have significant support. On its face this doctrine would seem to provide a defence those who advertise “Get your Fake Rolex here,” on the view that the independent function of the Rolex mark is to allow wearers to advertise their wealth and success.

  3. PS - I should have mentioned that in the US the fake Rolex vendor would certainly lose on dilution grounds even if the aesthetic functionality defence were successful on the trade mark issue.


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