Anti-counterfeiting: Burden of proof

The Court of Appeal has clarified the nature of the defence of reasonable belief of non-infringement under section 92(5) of the Trade Marks Act 1994, in the case of S –v- London Borough of Havering, an appeal from a preliminary decision.

The defendant had been charged with two counts of unauthorised possession of infringing goods under the criminal provisions of the Trade Marks Act. He raised two preliminary questions regarding section 92(5), which provides that it is a defence for a person to “show that he believed on reasonable grounds that the use of the sign in the manner which was used, or was to be used, was not an infringement of the registered trade mark.”

The defendant argued that the effect of section 92(5) was to impose an evidential burden on him, rather than a persuasive burden. An evidential burden simply requires a party to introduce sufficient evidence in support of an issue to raise it for determination by the court. In this case it would require the accused to adduce evidence of his reasonable belief of non-infringement, but the prosecution would bear the burden of disproving this point. A persuasive burden is a heavier obligation, and would require the accused to prove, on the balance of probabilities, that he did have the necessary belief.

Secondly, the defendant argued that the imposition of a persuasive burden would be inconsistent with 6(2) of the European Convention on Human Rights, which provides that an accused is presumed innocent until proven guilty.

The appeal was dismissed. In a judgment given on 20 November 2002, the Court confirmed that Section 92(5) imposed a persuasive burden upon a defendant. Its language was sufficiently clear to indicate that this was Parliament’s intention.

The Court also held that the imposition of a persuasive burden of proof upon a defendant was not incompatible with Article 6(2) of the Convention on Human Rights, since it was defined within reasonable limits, was proportionate and struck a proper balance between the interests of the public and the interests of the accused.

The Court of Criminal Appeal declined an application for permission to appeal to the House of Lords, but certified that the matters in issue were of public importance. This leaves open the possibility that the House of Lords will grant leave to appeal.

The Court of Appeal decision gives some comfort to brand owners combating counterfeiting, by confirming the onerous burden on a defendant wishing to avail himself of the defence of reasonable belief of non-infringement.

Please contact Stephen Whybrow by telephone on +44 (0)207 367 2175 or by email at [email protected] if you would like further information or have any queries regarding the decision.