The structure and wording of Sec. 92 is different from that of Sec. 10. It cannot possibly be said that potential liability for civil infringement is the same as potential liability to criminal prosecution and conviction. Section 10 contains no mental element, whereas Sec. 92 stipulates that the relevant act must be done “with a view to” gain or causing loss. Another clear difference is the provision of a special defence conferred by Sec. 92(5) which has no counterpart in Sec. 10. Also the phrase “likely to be mistaken for”, as contained in Sec. 92, is narrower than the phrase “a likelihood of confusion on the part of the public”, as contained in Sec. 10.
There is no coherent basis, even accepting that Sec. 10 is dealing with civil liability and Sec. 92 is dealing with criminal liability, for giving a different meaning or approach to the like phrase as used in Sec. 92. The statute is to be read as a whole; and the provisions in Sec. 92 are part of the overall statutory scheme.
Section 92 has a broad application, potentially extending not only to “counterfeit” goods, as such, but also to grey goods.
Trade mark violation gravely undermines the value of a brand and affects legitimate trade. The very fact of a cheap sale of an unauthorized branded item can both dupe a customer and diminish the market and overall value of the trade mark, in terms of perception of quality and exclusivity. In some cases moreover very real issues of public health and safety can arise where the goods are fake or, even if originally manufacture with the trade mark proprietor’s authorization, are then rejected as sub-standard but nevertheless sold on without authorization.
No difference as to the commitment of a criminal offence can be made when branded goods are sold without authorization by the factory when an order with an authorized factory is cancelled shortly before manufacture commences or shortly after the manufacturing process is concluded.
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R v. C and Others Trade Marks Act 1994, Secs. 10, 92. “R v. C & Ors”. IIC 48, 610–611 (2017). https://doi.org/10.1007/s40319-017-0611-0
- Grey goods
- Criminal offence
- Criminal prosecution
- Civil offense
- Counterfeit goods
- Trade mark violation