R v Johnstone

“Criminal trademark infringement requires proof of dishonest intention — not mere civil confusion.”

Short Description

This criminal law case clarified how trademark infringement under UK criminal statutes differs from civil infringement. It focused on whether a market trader selling CDs bearing band names without authorization could be criminally liable. The judgment emphasized that criminal liability demands dishonest conduct, not merely the possibility of consumer confusion.

Facts

Johnstone was selling CDs and cassettes with popular music group names at a marketplace without authorization. He was prosecuted under criminal provisions for applying signs identical to trademarks. Johnstone argued that civil infringement rules (likelihood of confusion) should not automatically apply to criminal offences, as criminal law requires a higher burden of proof and mental element.

Findings / Reasoning

The House of Lords held that criminal trademark offences require proof of mens rea—the defendant must intentionally apply the mark dishonestly or intend to cause consumers to believe the goods are genuine. Simply using a similar sign is not enough. The court drew a clear distinction between civil infringement (strict liability) and criminal infringement (requires dishonesty).

Suggestions / Observations

The decision safeguards traders from criminal punishment for innocent mistakes and maintains proportionality in enforcement. It underscores the importance of distinguishing genuine criminal counterfeiting from mere civil infringement. Businesses must still ensure proper authorization but criminal charges require strong evidence of intentional deception.

Judgment & Date

The House of Lords upheld the requirement of dishonesty for criminal liability and dismissed the appeal for a lower threshold.

Judgment Date : 2003 (UKHL).