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  • April 9th, 2016

Trademark Act – Offences on the Internet and Open Market

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A huge volume of goods are traded on the internet and there is increasing threat of prosecution on traders dealing with non authentic brands or grey market goods or goods that are copies of original product.

The law is worded in a complicated way and this blog looks at Trademark law [although there can be dual infringement of copyright law].

Who is this for?

This is a much simplified explanation of Trademark law as it applies to online traders, dealer and occasional business people.

The vast majority of offences relate to people who deal in: –

  • clothes, shoes garments accessories of every description with a label that adds value to the goods
  • sports clothes, trainers, gym equipment
  • electronic goods, music, computer software, programs
  • motoring goods and accessories
  • watches, jewellery of any description
  • any goods that have a made greater value by it bearing a brand label or trade mark which would far cheaper without trademark being applied to the goods

The Trademark Act 1994 enables someone who designs a label to be applied to goods to protect that particular design by registering it at IPO ( Intellectual Property office

If the label or badge is distinctive for the goods and services provided it will be registered as a Trade mark.

Trademark Act 1994 enables the holder of the registration to enforce the trademark by preventing other people from using it in different legal ways.

How Do They Know If I Am Breaking Trademark Law?

The traders who attract attention are the ones who advertise multiple items or the same type. This suggest that there is a bulk supply of goods and investigators

Letter from a firm of solicitors – sellers on eBay/internet are now being contacted by firms of solicitors with demand to cease and desist from selling goods bearing their clients trademark [allegedly] – they also ask for specific amounts of damages.

Prosecution by Trading Standards officers – have powers [like the police] and they are investigators of the case – Specialist Fraud Division of CPS conduct prosecutions cases as the lawyers.

Trading Standards New and Increased powers

Powers of Trading Standards to Investigate

The Trading Standards Authority is under a duty to enforce a wide range of legislation controlling the supply of goods and services. Some of the areas Trading Standards are under a duty to investigate and enforce include prohibition of the sale of tobacco, misdescription on the supply of goods, the fraudulent application of a trademark and the promotion of fair-trading. Trading Standards authorities WILL prosecute individuals and businesses were it is appropriate to do so.

Power to Make Test Purchases

Trading Standards when investigating any complaint or breach of regulation or legislation has the power to make test purchases. This may include the purchase of a product or the entering into a contract to secure a product.

  • Where during the course of an investigation goods have been purchased, the results MUST be made known to the supplier.
  • The supplier where practicable MUST have the goods made available to them to conduct their own tests.

Power of Entry and Investigation

An officer from Trading Standards has the power to enter a premises (save for a dwelling) during business hours and conduct the following:

  • Inspect any goods
  • Request the production of documents relating to the business.

If upon the inspection of the above the officer has reasonable cause to believe there has been a breach of Regulation or Legislation then he may:

  • Seize and detail any goods
  • Seize and detain any documents

Those who obstruct in the above will be committing a separate criminal offence and could be sent to prison!

Power of Entry with a Warrant

If officers from Trading Standards wish to enter premises at any other time, AND with force, then a warrant is required. The warrant will have to obtain from the Magistrates court. For the warrant to be granted one of the following will have to be met.

  • That on the premises there are documents which will likely disclose evidence of an offence.

OR

  • That an offence is or is about to be committed.

They will further have to show in addition one of the following:

  • Entry to the premises will be refused.
  • That giving notice of entry would defeat the object.
  • Premises are unoccupied.

Codes of Practice

Officers from trading Standards have the power to arrest, detain and interview any suspect. During the course of any investigation Trading Standards Officers MUST adhere to the Codes of Practice usually associated with police officers. The following Codes of practice are relevant and any breach of these may lead any case being ‘thrown out’ of court’ or a particular piece of evidence being deemed inadmissible.

  • Code B – proper procedure for the search of premises and seizure of property
  • Code C – the detention, treatment and questioning of a suspect
  • Code E – The interview process.

Pre Charge proceedings – Restraint of assets

Increasingly, Trading Standards are applying to the Crown Court for Restraint orders against assets of individuals or businesses before they issue a summons or charge. The purpose of those proceedings is to prevent a dissipation of assets because the proceedings have been started.

To succeed in an application to restrain assets, Trading Standard have to produce evidence, usually from a financial investigator, that: –

  • there are assets which could be the proceeds of a crime
  • the value of the indented charges are £5000.00 or more
  • the assets might be dissipated or removed from the reach of a confiscation order

The powers of Trading standard department have been increased in term of Scope

Advice and Representation

If you need advice or representation on a trademark law matter then you can contact MJP solicitors on 0333 011 0515 or through our contact page. We are available throughout England and Wales including Liverpool and London.


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