Defence of poor quality trade mark reproduction rejected by Court of Appeal

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.