Michael Brunskill acted for a large electrical retail company in an investigation and subsequent prosecution by West Berkshire Trading Standards. The case stemmed from the seizure by Trading Standards officers of hundreds of counterfeit BaByliss products from the company’s warehouse in West Berkshire. The case went to trial at Reading Magistrates court in June 2017 resulting in a full acquittal for the company and an order for defence costs to be met from central funds.

The counterfeit goods were extremely convincing copies and not distinguishable from the genuine article to the untrained eye. They had covertly entered the supply chain before they came into the hands of the company which had not realised that the goods were counterfeit given that they were supplied as genuine products. Nevertheless, West Berkshire Trading standards chose to prosecute the company and relied on the strict nature of the trade marks legislation in the hope of obtaining a conviction.

Section 92 of the Trade Marks Act 1994 has been described as an offence of near absolute liability, meaning that mere possession of counterfeit goods with a view to selling them on could be enough to result in a criminal conviction. There is a very limited defence available under s.92(5) of the Act which protects those who believed on reasonable grounds that their actions did not amount to an infringement of the trade mark. The case law (in relation to what amounts to a belief on reasonable grounds) is unforgiving and sets a high bar for those who wish to take advantage of the statutory defence.

In this case, West Berkshire Trading Standards were confident that the strict legislation would play to its advantage and consequently the court trial was dominated by the defence team’s attempts to establish that the company honestly and reasonably believed the goods to be genuine. This was ultimately achieved by the convincing witness testimony of the two directors of the company and the submission of documentary evidence concerning the purchase of the goods from its two German suppliers (both of whom had supplied the counterfeit products). Witness statements were obtained from the CEO’s of the German suppliers and a successful application was made at trial for those statements to be entered into evidence without the need for the witnesses to attend court.

This was a hard fought case, particularly in light of the harsh legislation, and a momentous result for the client. There would have been severe economic consequences for the company if it had been convicted, for example removal from Amazon and other online markets through which it conducts a large amount of its trade.