The Trademark Act of 1994 protects companies by prohibiting the unauthorized use of trademarks. Businesses—whether wholesalers or retailers—must ensure they are not infringing trademarks to avoid legal consequences, including potential prison sentences of up to 10 years.

Under Section 92 of the Trademarks Act 1994, it is a criminal offence for an individual to possess goods displaying a registered trademark “without consent” if they intend to profit from them.

Some of the primary offences under Section 92 also include:

  1. Possession of Infringing Goods with Intent to Sell (Section 92(1)(c))
  • It is an offence to possess or control goods that bear a registered trademark without consent, with the intention of selling or supplying those goods. This includes counterfeit goods that are intended for sale to others.
  1. Applying a Registered Trademark without Consent (Section 92(1)(a))
  • Applying a registered trademark to goods or packaging without the trademark owner’s consent is an offence. This includes using the mark on products, labels, or packaging in a way that could mislead customers.
  1. Supplying or Offering Infringing Goods (Section 92(1)(b))
  • Selling, distributing, or even offering to sell goods that bear an unauthorized registered trademark is an offence. This applies whether the goods are sold directly to consumers or through intermediaries.
  1. Making or Possessing Materials for Trademark Infringement (Section 92(1)(d))
  • Possessing or making tools, materials, or labels with the intent to create counterfeit goods is an offence under the Act. This can include machinery, packaging, or any items specifically intended to apply the unauthorized trademark.
  1. Importing Infringing Goods (Section 92(1)(c))
  • Importing goods into the UK that bear a registered trademark without the owner’s consent, with the intention to sell or distribute them, constitutes an offence. This applies to both personal and commercial imports intended for resale.
  1. Secondary Liability Offences
  • Aiding, abetting, counseling, or procuring any of the above offences can also lead to liability under the Act. For example, if someone assists another party in manufacturing or distributing counterfeit goods, they could also face charges.

Defences in Trademark Infringement

In cases of alleged infringement, the defence may argue that the trader reasonably believed the goods were legitimate. To support this defence, businesses should:

  1. Pricing Accuracy: Ensure prices align with standard market rates for branded goods.
  2. Detailed Documentation: Maintain contracts with clear terms, including trademark holder names and specific details of the goods.
  3. Identity Verification: Confirm identities of both buyers and sellers.
  4. Product Inspection: Inspect samples and document observations regarding quality.

When in Doubt

If uncertain, traders should consult with local Trading Standards or directly with the trademark holder, documenting all advice received. For high-value transactions, seeking legal guidance from a trademark law specialist is recommended.

The Importance of Consent

Under the Act, the term “license” refers specifically to consent. The offense focuses on the absence of this consent, which prosecution must prove. If convicted, the consequences can extend to confiscation of assets under the Proceeds of Crime Act 2002.

For legal support with trademark-related matters, it’s crucial to consult solicitors experienced in trademark law to help safeguard your business against infringement allegations.