Feb 9, 2016

Charity at Home Begins with Trade Mark Infringement

When consumers think of counterfeiting, they usually think of fake handbags, sunglasses or similar high end luxury consumer items. However, individuals are also attempting to copy the names or logos of reputable charities in order to make financial gain.

Fortunately, in such circumstances the law is able to intervene. Even without charity law protection against counterfeiters, charities are able to protect their individual brands.

A recent case involved a Croydon-based couple, Jason and Natalie Robertson, who were caught in possession of imitation goods bearing the name and logo of Cancer Research UK and their well-known 'Race for Life' brand. Although a small operation, the couple had collectively amassed clothing and wristbands worth approximately £10,000 at street level when Trading Standards discovered their set-up.

As well as copying the branding of Cancer Research UK, the couple were also in possession of clothing featuring Justin Bieber, One Direction and Ed Sheeran, all without permission to use those trade marks. The Court was told that the company used images from the internet to reproduce the trade marks onto clothes which they then sold on eBay and their own company website.

Trade Marks Act 1994

Criminal Proceedings

The Trade Marks Act 1994 ("TMA 1994") states that an individual who produces or sells counterfeit goods bearing another's trade mark may be guilty of a criminal offence. The law also covers situations where someone makes illicit labelling or packaging. The sanctions available to the court include an unlimited financial penalty and/or 10 years imprisonment.

The Robertson's were handed a confiscation order which acted as a fine worth £75,000 under the Proceeds of Crime Act. As can be seen this is a large sum relative to the small scale operation run by the Robertson's indicating the seriousness the courts attach to such fraudulent activity and was clearly ordered to act as a deterrent for other counterfeiters.

In addition, it was ordered that the clothing should be destroyed, although a discretion was made in that the authorities who seized the counterfeited goods could give them away to the homelessness or disaster relief charities, once the unauthorised branding had been removed to prevent re-circulation.

Civil Proceedings

Cancer Research UK would have the option to issue civil proceedings against the Robertson's. A trade mark owner may be entitled to losses flowing from the counterfeiting or be entitled to an 'account of profits' which is basically the income generated by the defendant company in selling the counterfeit merchandise.

The case of the Robertson's highlights the issue that although charity law per se does not as such provide protection against counterfeiting, charities may be able to rely on the law of trade marks. It is also in the public interest to act against the misuse of branding especially when the sufferer is a charity.

 

If you are affected by any of the issues above please do not hesitate to contact McDaniel & Co. on 0191 281 4000 or legal@mcdanielslaw.com

Posted by: in: Case Law, News, Trade Marks

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