Teletubbies tighten Trademarks Act

The Teletubbies teamed up with a West Country council at the High Court recently to fight against the sale of counterfeit goods.

Judges upheld a decision by Torbay Council to prosecute local market trader Satnam Singh for selling children's clothing bearing a sign identical to the Teletubbies registered trademark.

And they ruled that Torbay Magistrates Court was wrong to clear Singh of breaching the BBC children's TV show's trademark.

The decision in the case of Torbay Council v Singh is one which strengthens the hand of local authorities and others battling to stem the tide of illicit goods flooding on to the UK retail market.

It makes clear that retailers have a "near absolute" duty to carry out stringent checks with the trademark registry to ensure they are not breaching a trademark.

If they don't, they could face prosecution which, if it is successful, carries maximum penalties of unlimited fines, up to 10 years in prison, or both.

The council was represented at the hearing by Martin Meeke of Colleton Chambers in Exeter, who was instructed by trading standards law specialist Judith Constable, one of the council's in-house lawyers.

Constable says the case has provided long-awaited clarification of the statutory defence under the Trademarks Act 1994 and will have a wide-ranging impact within trading standards departments throughout the country.

As far as the recent case is concerned, the prosecution will not go any further, as the council did not ask to have the matter sent back to the magistrates. It merely sought to establish the extent of the liability of traders such as Singh.

Torbay Magistrates Court acquitted Singh after hearing that he did not know of the existence of the trademark. His supplier had assured him there was no problem with the goods and he had checked Drapers Record to see whether the logos were registered.

Lord Justice Auld accepted that the magistrates took the view he had acted "in good faith". However, he did not consider Singh had done enough. He said anyone with doubts about a trademark could get a definitive answer by checking the register of trademarks.

If they failed to do this they could not make out a defence under the Trademarks Act. He considered the offence of breaching the act was "near absolute".

Constable says : "As far as I know this is the first case on the statutory defence under Section 92(5) of the Trademarks Act 1994.

"Clarification on the statutory defence has been needed for some time and this case will have national implications for trading standards.

"Most consumer protection legislation has a statutory defence. That provides a defence if the defendant can show he or she exercised all due diligence and took all reasonable precautions to avoid the commission of the offence.

"What the Justices originally did was to apply the normal due diligence defence to the Trademarks Act.

"One of the things this judgment has done is to draw a very firm distinction.

"We now know that the due diligence defence is not applicable to the Trademarks Act.

"The judgment will affect the due diligence defence as it indicates that, if there is a register available, you cannot make out that defence unless you have first checked that register.

"They have tightened it up. It's not enough for someone accused of breaching the Act to say they thought it was all right.

"This can be done in a number of ways. There is a trademarks search and advisory service or copies of the register are kept at some public libraries.

"As a holiday resort Torbay does get involved in quite a lot of prosecutions in respect of counterfeiting.

"But I think it was the luck of the draw that we happened to be the authority to take a test case on this important point of consumer protection law.

"I have been dealing with trading standards matters for some eight years and felt quite strongly about this case.

"After the magistrates reached their decision it was a matter which had to be cleared up.

"I think that word will now pass round trading standards departments fairly quickly. This decision has strengthened the hand of all who are involved in the fight against the sale of counterfeit goods."