Retailer Satnam Singh was acquitted of an offence under s92(1)(b) of the Trade Marks Act 1994 after offering for sale, childrens’ clothes carrying the Teletubbies registered trade mark where the mark had been applied without its owner’s consent.
Who: Torbay Trading Standards, S Singh
When: June 1999
Retailer Satnam Singh was acquitted of an offence under s92(1)(b) of the Trade Marks Act 1994 after offering for sale childrens' clothes carrying the Teletubbies registered trade mark where the mark had been applied without its owner's consent. He said he acted in good faith, having checked with his supplier who confirmed they were not counterfeit and not seen any reference in the Draper's Record to the logo being a registered trade mark. The appeal court took a different view. The belief of the defendant as to whether the trade mark in question was registered, they said, was completely irrelevant. It was assumed that the defendant knew the trade mark was registered. The only get-out was a reasonable belief that the way in which the trade mark was being used was not an infringement.
Why this matters:
It is far from clear how this belief could arise if the product is in fact a counterfeit. What is clear, however, is that, unlike other consumer protection offences, there is no general "due diligence" defence here. When retailers advertise or display for sale products to which registered trade marks have been applied without the brand owner's consent, liability is to all intents and purposes strict, with the potential penalties high at unlimited fines and up to 10 years in prison for "consenting or conniving" directors or managers. The best policy therefore is for retailers to operate a blanket policy of double-checking before displaying or advertising products about which they have even the smallest doubt. This should be done by searches of the trade mark registry and enquiries with the registered trade mark owner.