UK: R v Johnstone - Clarification and Uncertainty

Last Updated: 5 May 2004
Article by Claire Mortimer

Originally published May 2003


This case gave the House of Lords the opportunity to sort out some of the inconsistencies in case law surrounding the criminal provisions of the Trade Marks Act. But in doing so, another inconsistency appears to have been created. Their Lordships’ interpretation of the European Court of Justice’s decision in Arsenal seems to be at odds with the Court of Appeal’s interpretation in its Arsenal judgment, handed down just one day earlier.


Mr Johnstone was found to have in his possession a number of "bootlegged" CDs (i.e. unauthorised copies of recordings of artists’ live performances). These CDs bore performer’s names, such as U2, The Rolling Stones and Bon Jovi, which are registered as trade marks. Mr Johnstone was charged with possessing these "bootlegged" CDs with a view to committing an offence under s92(1)(c) of the Trade Marks Act 1994.

At trial, Mr Johnstone attempted to rely upon the honest and reasonable defence belief under s92(5). He also submitted that before the Crown could establish an offence under s92, the Crown must prove civil infringement of the registered trade mark in accordance with sections 9 to 11 of the Act. He wished to rely upon section 11(2)(b) to contend that the use of the performer’s name merely indicated who was the performer. The trial judge rejected his submissions on the basis that section 92 was a ‘stand alone’ provision which was a complete code so far as criminal offences were concerned.

Mr Johnstone’s appeal was upheld by the Court of Appeal who considered that, unless the defences available in a claim for civil infringement were available in a claim for criminal infringement, section 92 would criminalise conduct which did not amount to a civil infringement. The Crown appealed to the House of Lords.


The House of Lords determined three questions which have dogged the courts in determining cases under section 92.

First, it is clear from the judgment that in order to amount to a criminal offence, the relevant conduct must amount to a civil infringement. This means that all defences open to a Defendant in a civil infringement action will be open to a Defendant in a criminal infringement action. This does not mean that the Crown will need to prove civil infringement in every case; it seems that the prosecution need only attempt to disprove a civil defence if it is raised by the Defendant.

Secondly, the House of Lords considered the provisions of section 92(5). This provides that "it is a defence for a person charged with an offence under this section to show that he believed on reasonable grounds that the use of the sign in the manner in which it was used, or was to be used, was not an infringement of the registered trade mark". A previous case had decided that this defence was not available to a Defendant who claimed to be unaware of the relevant trade mark registration, because the section presupposed such awareness. The House of Lords overruled, confirming that the defence is open to all Defendants who believe that they are not infringing, whether that is because they believe that the goods are genuine or because they believe that there is no trade mark to infringe. The key is whether that belief is ‘reasonable’.

Finally, the House of Lords considered, obiter, that the defence in section 92(5) imposes a legal, rather than an evidential burden on the Defendant. This means that the Defendant must prove the existence of a defence under this section on the balance of probablities. This is more onerous on the Defendant that an evidential burden, which simply requires the Defendant to raise an issue sufficient to require the prosecution to disprove the existence of the defence beyond reasonable doubt. The House of Lords considered that this was compatible with the presumption of innocence contained in the European Convention on Human Rights since there were compelling reasons for imposing a legal burden on the Defendant, including the importance and difficulty of combating counterfeiting.


The decision is a welcome clarification of section 92. However, in deciding what constitutes a civil infringement following the European Court of Justices’ decision in Arsenal, their Lordships appear to conflict with the Court of Appeal’s decision in Arsenal, further muddying the waters.

The House of Lords declared that, in order to constitute a civil infringement, use of an infringing sign must be "in a trade mark sense" (i.e. purporting to identify and guarantee the trade origin of the goods to which it is applied). The House of Lords considered case law which raised questions as to whether non-trade mark use could amount to infringing use but stated that these doubts "must now be regarded as laid to rest" by the European Court of Justice’s decision in Arsenal.

That’s not what the Court of Appeal thought in Arsenal. This judgment was handed down the previous day but had not been available to the House of Lords prior to its judgment. The Court of Appeal stated that the European Court of Justice’s decision in Arsenal is not concerned with whether the use complained about is ‘trade mark use’. The consideration is whether the third party’s use affects or is likely to affect or jeopardise the guarantee of origin which was the essential function of Arsenal’s trade mark rights. Although this clearly covers infringing use ‘in a trade mark sense’, it goes wider than that, embracing the concept of dilution.

What is clear from both decisions is that the concept of infringing use is now wider, however that use may be defined. Given the Court of Appeal’s (obiter) determination in Arsenal that Reed’s use of the trade marks in issue was trade mark use, further clarification of the law is unlikely to affect the outcome of the Arsenal decision. Nonetheless, this uncertainty is unsatisfactory. The House of Lords may well seize the opportunity to clarify the law should Mr Reed appeal……

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.