Trade mark used descriptively is OK, says House of Lords

The case concerned Robert Johnstone, an alleged trader in bootleg CDs, and a provision of trade mark law that is commonly used by Trading Standards authorities to prosecute traders in counterfeit goods.

Band names are often registered as trade marks to protect against illegal copies of sound recordings. Where a trade mark is infringed, for example on an unauthorised copy of a CD, trading standards officers have a statutory duty to act.

In 1997, Johnstone was found to be in possession of bootleg CDs of major bands including Bon Jovi, The Rolling Stones and U2, all registered as trade marks.

Johnstone was convicted of trade mark offences, but succeeded in his appeal against conviction on the grounds that the use of the artists' names on the discs had not been as an indication of trade origin, and therefore not a trade mark use.

The offences for which he was convicted were based on a provision of the Act that required the prosecution to show that the offending use was as an indication of trade origin.

So, if the name on the disc was just indicating the name of the artist and this use was not likely to be understood as indicating any other connection between the artist and the disc, it would be descriptive only and not an indication of trade origin.

While the House of Lords agreed that Johnstone's conviction should be overturned, the British music industry was pleased by its comments on the relevant law.

Lord Nicholls of Birkenhead explained that the burden of proving the defence under the Act rests upon the accused.

Lord Nicholls wrote:

"given the importance and difficulty of combating counterfeiting, and given the comparative ease with which an accused can raise an issue about his honesty, overall it is fair and reasonable to require a trader, should need arise, to prove on the balance of probability that he honestly and reasonably believed the goods were genuine".

Lord Walker of Gestingthorpe agreed, adding that he felt that Johnstone "would have had a difficult task in making good the defences on which he wished to rely".

The fact that "Bon Jovi" was written on the packaging of the bootleg CDs was, in the circumstances of this case, descriptive and not a claim as to the origin of the CD. It was not therefore in breach of the Act.

The question of abuse of copyright is an entirely separate issue and was not discussed, so this case will not affect the existing protection for the rights of performers.

Andrew Yeates, the Director General of the national trade body, the British Phonographic Industry (BPI) said yesterday:

"The BPI is pleased to have been involved in this final appeal and regards this as an important step forward in the ongoing fight against counterfeiting and piracy."

The full opinion of the House of Lords is available at
www.parliament.the-stationery-office
.co.uk/pa/ld200203/ldjudgmt/jd030522/
john-1.htm