Regina v. Johnstone (Respondent) (On appeal from the Court of Appeal (Criminal Division))
88. I come back to what I described as the issues which lie at the heart of this appeal. First, is trade mark use a necessary ingredient of criminal liability under section 92? On this point I am in respectful agreement with the reasoning and conclusions in the speech of Lord Nicholls. It is a necessary ingredient, and there is no need to go on a circuitous route through article 6(1)(b) or section 11(2)(b) in order to arrive at that conclusion. It is adequately (if not pellucidly) expressed in the language of section 92, which in its three offence-creating sub-sections requires the defendant, for the purpose of gain, to have applied a sign to goods (or their packaging), or to have engaged in other acts or conduct in relation to goods (or business materials) which bear that sign. I would hold that such acts or conduct must be restricted to acts or conduct amounting to trade mark use. Facts such as those of Mothercare or Hölterhoff would not fall within any of sub-sections (1) to (3) of section 92.
89. On the second issue (the proper limits of trade mark use) I would not go so far as the Court of Appeal went in preferring the minority view in Musidor and in inclining to the view that every bootlegging case of this sort would involve trade mark use. It seems likely that Mr Johnstone would have had a difficult task in making good the defences on which he wished to rely. However, he should have been permitted to run them. I agree with the Court of Appeal that his conviction (on his pleading guilty after not being allowed to put forward the defences on which he wished to rely) must be regarded as unsafe. I would therefore dismiss this appeal.