Boulter's South Gloucestershire home was raided by police and
trading standards officers. They found 1,640 DVDs of feature films,
457 DVDs of pornography and 232 music CDs, all of them pirated.
They also found equipment used to create pirated copies of
material.
Boulter's defence was that the logos of EMI and other companies
on the discs were so poor that they did not actually constitute
trade mark infringement.
"The material bearing the trade marks was of such poor quality
that no one could think that its trade origin was that of the trade
mark owner," it read. "Accordingly, the use of the trade marks was
not likely to jeopardise the guarantee of origin which constituted
the essential function of the trademark rights owned by the trade
mark owners."
Boulter pleaded guilty in the original trial after the judge
rejected his defence. He asked the Court of Appeal to consider
allowing his defence. It refused.
The Court said that it could not accept the argument. "In our
judgment, it is impossible to read Parliament as having intended
that, where there is straightforward counterfeiting of goods and
their registered trademark, it is open to a defendant to advance a
defence that the quality was so poor as not to give rise to any
risk of confusion," said the ruling by Lord Justice Toulson.
"[That] would go a considerable way to assist the vice which Lord
Nicholls at any rate thought that Parliament had attempted to
combat, namely the counterfeiter who sells his wares as 'genuine
fakes'."
"In the present case, it is not and could not seriously be
suggested that the use of the EMI logo or other logos was anything
other than a replication of those badges as signs of origin
registered by the proprietors. It had no other rational purpose.
Whether the reproductions were poor and whether they were actually
likely to deceive is in our judgment neither [here] nor there,"
said Lord Justice Toulson.
"The goods in this case did not involve the use of a trademark
for a descriptive purpose but, as already stressed, was pure
counterfeiting. It self evidently damages the registered proprietor
of a trademark if that proprietor is not able to control the use of
its logo as a badge of origin and if goods of variable quality
bearing that stamp are on the market."
The ruling of the Court said that a defence based on the quality
of the reproduction was not permissible.
"There is no foundation for this as a defence under the statute
or in authority and, as already noted, it would reopen the door to
people like the applicant selling their wares as genuine fakes. For
those reasons we dismiss this renewed application," it said.
A market trader in the past has successfully argued that the use
of a name on a counterfeit CD is not always trade mark
infringement, albeit the piracy of CDs will amount to copyright
infringement.
The House of Lords accepted trader Robert Johnstone's argument
that when he hand-wrote artists' names on pirated CDs he was not
using their trade marks. He said he was merely indicating the
contents of the CD and not using the name as a badge of origin
proving their provenance.
The House of Lords accepted that argument.
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