Intellectual Property Crime

updated 8 November 2019|Legal Guidance, Fraud and economic crime

What is Intellectual Property?

Intellectual Property results from any person’s creativity and ideas. Such rights can exist in a book, a brand, an invention, a design or a song. This list is not exhaustive.

IP rights allow people to control the use that others can make of these works.

Under the criminal law, certain uses of copyright, registered designs or trade mark, without the owner's permission can amount to a criminal offence. These are often referred to as piracy, for a copyright infringement, intentional copying for registered designs, and counterfeiting, for a trade mark infringement.

As a crime, the infringement of IP rights may not leave a bruise, a home ransacked or a person abused, but it permeates all walks of life and business, and is growing hugely.

There are a variety of marketplaces for fake, copied and pirate goods. It penetrates the supply chain by door to door sales, online sales, market stalls, street sales, car boot sales and even high street shops.

Offences to be considered

Prosecutors should consider offences under the following when dealing with counterfeiting, copying and piracy cases:

  • Copyright Designs and Patents Act 1988, Sections 107, 198, 296 Z B and 297. Sections 107 and 198 as amended by the Digital Economy Act 2017
  • Trade Marks Act 1994, Section 92
  • Fraud Act 2006
  • Video Recordings Act 2010, Sections 9 to 14
  • Proceeds of Crime Act 2002
  • London 2012 Olympics and Paralympic Games legislation (or similar passed to accommodate global events)
  • Common Law offence of conspiracy to defraud
  • Registered Designs Act 1949 as amended by the Intellectual Property Act 2014

Working with third parties

CPS fraud lawyers regularly deal with intellectual property crime offences.

When the police send a case to the CPS which has been investigated by a third party or by the police assisted by a third party (for example the Federation Against Copyright Theft (FACT) or Federation Against Software Theft (FAST)) it is the CPS's duty to take over such police prosecutions (section 3 Prosecution of Offences Act 1985).

As a basic principle the police should conduct the investigation in the same way in which they normally investigate and such investigations must be independently managed and directed by the police. Third parties should have no involvement with the decision making process and no guarantees should be given regarding the charge and conviction of suspects. The CPS should be in sole charge of the prosecution; this will ensure that the independence of the investigation and prosecution of intellectual property offences are not undermined.

Copyright

What is Copyright?

Copyright is an unregistered, automatic right (unlike patents, registered designs or trade marks). So, in terms of protection there is no official action to take (no official registration or application to make, no forms to fill in or fees to pay). Copyright comes into effect as soon as something that can be protected is created and "fixed" in some way, e.g. on paper, on film, via sound recording, as an electronic record on the internet.

Copyright gives the author, artist, creator or composer of certain works (or their employer if the work was created in the course of employment) the right to prevent another person from copying or exploiting their work. It protects the form in which ideas are expressed rather than the ideas themselves, in order to prevent unfair advantage being taken of a person's creative efforts.

Copyright law can be found in Part I of the Copyright, Designs and Patents Act 1988 as amended (known as the CDPA). It has been amended on a number of occasions since it came into force on 1 August 1989. A list of the most important pieces of legislation that have amended the 1988 Act and some other information about legislation can be obtained from the UK Intellectual Property Office web site. The primary legislation and amending legislation can be read at http://www.legislation.gov.uk/.Copyright may not subsist in a name, title or phrase but these may be eligible for registration as a trade mark. Ideas are also not protected. Title to English copyright cannot be taken away by any foreign governmental decree - Peer International Corporation and others v Termidor Music Publishers Ltd and another [2003] EWCA Civ 1156.

Is infringement of copyright a criminal offence?

Deliberate infringement of copyright may be a criminal offence. Pursuing the criminals (e.g. when pirate or counterfeit copies of CDs/DVDs etc are being made, distributed or sold) can involve the police or trading standards departments.

However, many of the copyright-based industries concerned about this type of crime have formed organisations representing their interests that are actively involved in enforcement work, often in collaboration with the police or trading standards departments. In some casesthese organisations undertake criminal prosecutions in their own right.

Copyright - Rights in Performances

These are distinct from copyright rights but are contained within Part II of the CDPA (section

180 onwards). Amongst other things, they are rights covering bootleg recordings i.e. illicit recording and distribution of live performances.

The rights are given to performers and persons having recording rights and their consent is required for the exploitation of the live performance or the making of recordings.

Rights in performances should not be confused with performing rights. This term is usually used to signify rights under copyright in relation to the acts of performing, showing or playing a work, in which copyright subsists in public. For example: a store playing music over the loudspeakers.

Generally, a performance is a live performance given by one or more individuals which is a dramatic performance (including a dance or a mime), a musical performance or recitation of a literary work or a variety act or any similar presentation (section 180(2)). For example, if a person sings live to a recorded backing track (karaoke) the live performance relates only to the live singing. A performance is a qualifying performance if it is given by a qualifying individual or takes place in a qualifying country (Section 206).

The meaning of recording is important in terms of recording rights and infringement and is defined as being a film or sound recording made directly from a live performance etc. Rights are also infringed where copies of the recording are made without authorisation directly or indirectly from a master recording that was made of the performance.

For the rights to exist, certain qualification requirements must be satisfied. The performer's rights only subsist if the performance is a qualifying performance, (which by section 181, means that it must be given by a qualifying individual or take place in a qualifying country).

For the recording right, the person having recording rights who is party to an exclusive recording contract with a performer or the assignee of the benefit of such a contract must be a qualifying person. If not then the right may still arise where a person who has been licensed to make recordings or to whom the benefit of such a licence has been assigned is a qualifying person. A qualifying person can be an individual or a body corporate formed under UK law or of another qualifying country which carries on a substantial business in any qualifying country (section 206).

Section 181 defines qualifying performances.

Section 182 deals with consent for live transmission.

Section 182A deals with consent for copying of a recording. Section 182B deals with consent for issue of copies to the public.

Section 182C deals with consent for rental or lending of copies to the public. Section 182CA deals with consent required for making available to the public.

Section 182D deals with the right to equitable renumeration for exploitation of sound recordings.

Section 183 deals with infringement of performers rights by use of recording made without consent.

Section 184 deals with infringement of performers rights by importing, possessing or dealing with illicit recording.

Section 185 defines exclusive recording contracts and persons having recording rights.

Section 186 deals with the consent required for recording of performances subject to exclusive contracts.

Section 187 deals with infringements of recording rights by use of recordings made made without consent.

Section 188 deals with infringements of recording rights by importing, possessing or dealing with illicit recordings.

Criminal offences contrary to the CDPA

Prosecutors should be aware of the following sections of the CDPA which are summarised below:

Exceptions to rights conferred and duration and transmission of rights - Sections 189 - 193 and Schedule 2.

Remedies for infringements, offences and provisions with respect to delivery up and seizure - Sections 194 - 205.

Qualification for protection, extent and protection - Sections 206 - 210.

Section 107 contains a mixture of either way and summary only offences with a range of penalties.

CPDA creates criminal offences relating to articles which infringe copyright i.e unauthorised copying, importing, possessing, selling, exhibiting, and distributing. Offences can relate to:

  • Literary, dramatic and musical works which is recorded, in writing or otherwise, Section 3 CDPA
  • Artistic works, Section 4 CDPA
  • Sound recordings, Section 5A CDPA
  • Films, Section 5B CDPA
  • Broadcasts, Section 6 CDPA
  • Published editions, Section 8 CDPA

Examples could include, but are not limited to: CD’s, DVD’s, music, films, computer software, video games, publications, books photographs or posters.

Section 107(1 (a), (b), (d)(iv) or (e) offences are either way offences. If heard in the Magistrates Court the maximum sentence is 6 months imprisonment and/or an unlimited fine (a maximum of £5,000 for offences committed before 13 March 2015). The maximum sentence on indictment is 10 years' imprisonment and/or an unlimited fine.

Section 107(1)(c), (d)(i), (d)(ii), and (d)(iii) and 107(2) offences are summary offences, for which a maximum sentence of 3 months imprisonment and/or an unlimited fine (a maximum of £5,000 for offences committed before 13 March 2015) are available by way of penalty.

Section 107(2A) are either way offences. If heard in the Magistrates Court the maximum penalty is 3 months imprisonment and/or an unlimited fine (a maximum of £5,000 for offences committed before 13 March 2015).The maximum sentence on indictment is also now 10years and/or an unlimited fine as the Digital Economy Act 2017, Section 32(3) increased the maximum sentence from 2 years to 10 years for offences committed after 1 October 2017.

The case of R v Wayne Evans [2017] EWCA Crim 139 provided some sentencing guidance for cases involving s107 CDPA offences.  This case involved offending under s107(1)(e) of the CDPA along with s6(1) of the Fraud Act 2006. The guidance from the Court of Appeal can be found at paragraph 22 of the case citation:

The position must be that in offending of this kind the sentencing court must retain flexibility and gear a sentence to the circumstances of the particular offence or offences and to the circumstances of the particular offender. Nevertheless, we would suggest that the following (non-exhaustive) considerations are likely to be relevant in sentencing cases of this particular kind, involving the unlawful distribution of infringing copyright articles:

(1) First, illegal downloading and distribution is very often difficult to investigate and detect. It can give rise to serious problems and losses (none the less real for not being readily quantifiable) to the music and entertainment industry. Deterrent sentencing in such a context is appropriate.

(2) Second, the length of time (and including also any continuation after service of cease and desist notices) of the unlawful activity will always be highly relevant.

(3) Third, the profit accruing to the defendant as a result of the unlawful activity will always be relevant.

(4) Fourth, and whether or not a significant profit is made by the defendant, the loss accruing to the copyright owners so far as it can accurately be calculated will also be relevant: as will be the wider impact upon the music industry even if difficult to quantify in precise financial terms: because wider impact there always is.

(5) Fifth, even though this particular type of offending is not the subject of any Definitive Guideline there may be cases where it will be helpful to a judge to have regard to the Definitive Guidelines on fraud, bribery and money laundering offences. In some cases, such as the present, that will positively be required because one or more of the counts on the indictment, as here, will be a count which comes within the ambit of the guideline itself. But even where that is not the position there may be some cases where a judge, at least if only as a check, may wish to refer to the Definitive Guideline to get a feel, as it were, for the appropriate sentence. However, there will be other cases where the Definitive Guideline may be of marginal, and perhaps no, assistance at all. That will be a matter for the assessment of the judge in the individual case. Where the Definitive Guideline is required to be taken into account because one of the counts on the indictment is within the ambit of the guideline, that of itself will no doubt lend assistance in deciding what the appropriate overall sentence will be.

(6) Sixth, personal mitigation, assistance to the authorities and bases and pleas of guilt are to be taken into account in the usual way.

(7) Seventh, unless the unlawful activity of this kind is very amateur, minor or short-lived, or in the absence of particularly compelling mitigation or other exceptional circumstances, an immediate custodial sentence is likely to be appropriate in cases of illegal distribution of copyright infringing articles.

Section 107 offences require criminal intent, the suspect must know or have reason to believe they have an infringing product. Proof of the activity being 'in the course of a business' is not needed for 'making' or 'importing' and may not be required for 'distributing' (the word ‘distributing’ is not defined in the Act and has not yet, received judicial interpretation).

Without the licence of the copyright owner - It is submitted that Section 101 of the Magistrates' Courts Act 1980 applies - i.e. the onus is on the defendant to show that he had such a licence. See also Musa v Le Maitre [1987] FSR 272 Stephen Brown LJ:

"... I can see no practical difficulty to prevent a prosecutor from inviting a defendant to make an admission of fact as to first publication. An obstructive attitude might result in substantial costs. In any event it is unlikely to require the evidence of the actual maker or the holder of the copyright."

The presumptions as to authorship, in Sections 104 to 106, do not apply to any offences under Section 107 - see Section 107(6).

The meaning of infringing copy is contained in Section 27 and the meaning of illicit recording is contained in Section 197. See also, in particular:

  • Sections 17 (copying)
  • Section 21 (adaptation)
  • Section 22 (importing)
  • Section 23 (possessing)
  • Section 24 (providing means for making copies)
  • Section 25 (permitting use of premises for infringing performance)
  • Section 26 (provision of apparatus for infringing performance)

for equivalent infringement provisions to Section 107 offences.

Section 198 covers criminal liability for: making; importing (other than for personal/domestic use); possessing and dealing with in the course of a business, illicit recordings. These are recordings made without sufficientconsent of the performer (i.e. piracy or bootlegging). Bootlegging is the recording, duplication and sale of a performance such as a live concert stage performance without the permission of the performer.

Section 198 CPDA provides for similar offences as section 107 CPDA in relation to illicit recordings except that there are no offences equivalent to (d)(iii) exhibits in public or (e) distributes otherwise than in the course of a business to such an extent as to affect prejudicially the owner of the copyright.

Like Section 107 this offence requires criminal intent. The terms "in the course of a business", "without the licence of the copyright owner" and "infringing copy" have the same meaning as set out at section 107 above.

Because of the potential complexity of investigations for these offences, police and/or prosecutors should consider consulting experts from the appropriate Anti-Piracy Unit or rights owner concerned.

Section 198(1)(a), (b), or (d)(iii) are either way offences. If heard in the Magistrares Court the maximum sentence is 6 months imprisonment and/or an unlimited fine. If heard on indictment the maximum sentence is 10 years' imprisonment and/or an unlimited fine.

Section 198(1A) are either way offences. If heard in the Magistrates Court the maximum sentence is 3 months imprisonment and/or an unlimited fine. If heard in the Crown Court the maximum sentence is 10 years imprisonment and/or an unlimited fine as the Digital Economy Act 2017, Section 32(5) increased the maximum sentence from 2 years to 10 years for offences committed after 1 October 2017.

Section 198(1)(c), (d)(i), (d)(ii) or (2) are summary only offences and carry a maximum sentence of 6 months imprisonment and/or an unlimited fine (maximum £5,000 for offences committed before 13 March 2015).

There are no statutory defences to Sections 107 or 198.

Section 50A is an exception for a lawful user to make a back-up copy of a computer program which is necessary for the purposes of their lawful use. It has been unsuccessfully utilised in the past to justify copying software. See Sony Computer Entertainment v Paul Owen and Others [2002] ECDR 27; [2002] EMLR 34; [2002] EWHC45 where the practice of making back-up copies of computer games is considered within the context of Section 50A and regarded as falling outside of the criteria of making a lawful back up copy.

Section 296ZB CPDA creates a range of criminal offences which deal with devices or services which enable or facilitate the circumvention of technological measures and the advertising of a service to do this. In relation to computers, games stations and consoles this circumvention is commonly known as chipping, modding, soft modding or flashing. Section 296ZB offences are either way offences. If heard in the Magistrates Court the maximum penalty is 3 months imprisonment and/or an unlimited fine (maximum £5,000 for offences committed before 13 March 2015).The mmaximum sentence on indictment is two years imprisonment and /or a fine.

In the useful case of Gilham v R [2009] EWCA Crim 2293, paragraph 14 as extracted below gives a checklist of points that prosecutors must prove in such cases:

In order to establish that an offence under, by way of example, Section 296ZB (c)(i) of the CDPA has been committed in relation to games such as those concerned in the present appeal, the prosecution must prove:

(1) That the game is or includes copyright works within the meaning of Section 1.

(2) That the playing of a counterfeit DVD on a game console involves the copying of a copyright work.

(3) That such copying is of the whole or a substantial part of a copyright work: Section 16(3)(a).

(4) That the game consoles and/or genuine DVDs (i.e. copies of the copyright work or works created by or with the licence of the owner of the copyright) include effective technological measures within the meaning of Section 296ZF designed to protect those copyright works.

(5) That in the course of a business the defendant sold or let for hire a device, product or component which was primarily designed, produced, or adapted for the purpose of enabling or facilitating the circumvention of those technological measures. It is to be noted that this issue does not depend on the intention of a defendant who is not responsible for the design, production or adaptation of the device, product or component: his intention is irrelevant.

Section 297 CPDA covers fraudulent reception of broadcasts e.g. Satellite television programmes. Section 297(1) is a summary only offence for which the maximum penalty is an unlimited fine (£5,000 maximum for offences committed before 13 March 2015).

Section 297A CPDA sets out criminal liability for making, importing, advertising, possessing etc. unauthorised decoders. Section 297A offences are either way offences. In the Magistrates Court the maximum sentence is 6 months imprisonment and/or an umlimited fine (or a £5,000 maximum for offences committed before 13 March 2015). The maximum sentence on indictment is ten years' imprisonment and/ or an unlimited fine. Prosecutors should be aware of Section 297(A)(3) which provides a defence if the defendant proves that he did not know, and had no reasonable ground for believing, that the decoder was an unauthorised decoder.

Designs

The Registered Designs Act (RDA) 1949: An introduction to designs.

A registered design protects the look of the whole or part of a product, in particular, the lines, contours, colour, shape, textures or material of the product or its ornamentation.

In order for a design to be registered sections 1A to 1D of the RDA sets out a range of requirements, and exclusions see:

https://www.gov.uk/government/publications/registered-designs-act-and-rules

The RDA has been amended in recent years in order to harmonise legislation with that of the European Union.

These include the following requirements and exclusions:

  1. A design must be an industrial or handicraft item but does not include computer programs.
  2. It must be new and novel and give a different overall impression to designs already in the public domain.
  3. It cannot be dictated by features of appearance which are solely dictated by technical function.
  4. It cannot be contrary to public policy or accepted principals of morality.
  5. It should not relate to protected emblems (see schedule A1 of the RDA).

Additionally the legislation contains rules, civil or criminal, on the use of designs without the consent of the owner.

RDA 1949 (as amended) Section 35ZA was inserted by Section 13 of the Intellectual Property Act 2014.

The offence in Section 35ZA:

(1) To be found guilty someone must intentionally copy a design in the course of business, without the consent of its owner, whilst knowing (or having reason to believe) the design is registered. This intentional copying must also result in making a product exactly like the design in question or where a design has only been very slightly altered (the relevant law refers to this as “with features that differ only in immaterial details”).

(2) Subsection (3) applies in relation to a product where a registered design has been intentionally copied so as to make the product exactly to the design, or with features that differ only in immaterial details from the design.

(3) Sets out that it is an offence to knowingly use an intentionally copied design without the consent of the registered proprietor of the design, in the course of business to profit from that copying. This includes using, marketing, exporting, importing or stocking the design in the course of business.

The phrase ‘in the course of a business’ is a term that is common to many consumer law statutes and appears in the Trade Marks Act 1994 and the Copyright, Designs and Patents Act 1988.

It is an either way offence for which a maximum sentence of ten years’ imprisonment and/or a fine are available by way of penalty on indictment (Section 35ZA(8)(a)). In the Magistrates Court the maximum sentence is 6 months imprisonment and/or an unlimited fine (£5,000 maximum for offences committed before 13 March 2015) (Section 35ZA(8)(c)). Section 35ZA(8)(c) provides the sentencing provisions for summary conviction in Scotland.

Subsections (4) & (5) show that it is a defence for a person charged with an offence under this section to show that:

  • they reasonably believed:
  • the design in question was invalid (Section 35ZA(4)),
  • that they did not infringe the right in the design (Section 35ZA(5)(a)), or reasonably believed that they did not do so (Section 35ZA(5)(b)).

To rely upon the defence, the belief must be real and genuine and might arise because the defendant had for example an assessment from a bona fide legal expert or a court judgement.

35ZC sets out the forfeiture provisions for England and Wales or Northern Ireland and separate provisions for Scotland can be found in 35ZD.

35A sets out the position where offences under the RDA are committed by body corporate or partnership: liability of officers or partners. This provision mirrors that as set out in the TMA.

Patents

A patent for an invention is granted by government to the inventor, giving the inventor the right for a limited period to stop others from making, using, selling or importing the invention without the permission of the inventor. When a patent is granted, the invention becomes the property of the inventor, which like any other form of property or business asset can be bought, sold or licensed. Patents are territorial rights; a UK Patent will only give the holder rights within the United Kingdom, including the right to stop others from importing the patented products into the United Kingdom. The legislation in force at present is the 1977 Patents Act.

Patent infringement in the UK is a civil law matter not a criminal law issue.

Trade Marks

A trade mark is any sign which can distinguish the goods and services of one trader from those of another. A sign includes, for example, words, logos, pictures, or a combination of these. Basically, a trade mark is a badge of origin, used so that customers can recognise the product of a particular trader. Trade marks are closely associated with business image, goodwill and reputation. Goods are often requested by reference to a particular trade mark. A trade mark may in some cases be relied upon to indicate quality among other things.

Passing off and unregistered trade marks

Passing off occurs where a defendant makes a misrepresentation (which itself may or may not involve the use of a trade mark) that causes damage to the goodwill of the claimant's business which is itself known by a distinguishing sign or mark (effectively an unregistered trade mark). Strictly the right is not in the claimant's unregistered trade mark but in the business conducted under that sign or mark. The owner of an unregistered trade mark can take civil action to prevent passing off.

Trade Marks Infringements

There are civil rights and remedies for owners of registered trade marks in cases of infringement by unauthorised use - not just for goods or services which are identical with those for which the trade mark is registered and bearing an identical sign, but (with additional requirements) extending to:

  • goods or services which are similar to those for which the trade mark is registered;
  • goods or services which are not similar to those for which the trade mark is registered;

and

  • where the sign is similar to the registered trade mark.

Criminal Offences contrary to the Trade Marks Act 1994 (TMA)

Although only the offences in Section 92 have specific enforcement responsibilities attached to them, there are other criminal offences under TMA which prosecutors may wish to be aware of, including:

  • Section 84 - unregistered person being described as a registered trade mark agent;
  • Section 94 - making of a false entry in the register of trade marks;
  • Section 95 - falsely representing that a mark is a registered trade mark (either by means of the word 'registered' or any other word or symbol);
  • Section 99 - unauthorised use of Royal arms.

Section 92 TMA covers unauthorised use of trade mark, in relation to goods. Section 92 is not confined to fraudulent misapplication/misuse. The prosecutor does not have to prove mens rea - R v Keane [2001] FSR 7; no requirement to prove mens rea, the offence is one of "near absolute liability" - Torbay Council v Satnam Singh (1999) 163 JP 744.

All the offences contrary to Section 92 are either way offences. In the Magistrates Court the maximum sentence is 6 months imprisonment and/or an unlimited fine (£5,000 maximum for offences committed before 13th March 2015). The maximum sentence on indictment is 10 years' imprisonment and/or an unlimited fine. Section 103(2) sets out the definition of use.

Elements of the offence

To establish the offence under Section 92(1)(a) the prosecutor must prove:

  • Registration of the trade mark - the prosecutor must prove that, on the date of the commission of the alleged offence, the trade mark was registered; and the registration had been published.
  • "Application of a sign to goods within the registration" - the prosecutor must prove that:
    • the sign is identical to, or likely to be mistaken for, the registered trade mark in question;
    • the goods are goods in respect of which the trade mark is registered, OR, if they are not the trade mark has a reputation in the United Kingdom and the use of the sign takes or would take unfair advantage of, or is or would be detrimental to, the distinctive character or the repute of the trade mark;
  • the application of the sign was by the defendant (Section 92(1)(a). Or the defendant conducted one of the activities set out in Section 92(1)(b) or (c).
  • Lack of consent by the proprietor - In Houghton v Liverpool City Council [2000] Crim.L.R. 574 - lack of consent is "... a matter, like so many matters of fact, that may be the subject of proper inferences by the court, never forgetting the criminal standard of proof applies. In this case … the inference is most plainly to be drawn."
  • That the registered trade mark was being used as a trade mark.

For each of the offences in section 92(1) - (3) it is also necessary for the prosecutor to prove that the person conducted the activities "… with a view to gain for himself or another, or with intent to cause loss to another."

These words appear in the Theft Act 1968 and the meaning given for the purposes of that Act (section 34(2)(a)) is "... 'gain' and 'loss' are to be construed as extending only to gain or loss in money or other property, but as extending to any such gain or loss whether temporary or permanent and (i) 'gain' includes a gain by keeping what one has, as well as gain by getting what one has not; and (ii) 'loss' includes a loss by not getting what one might get, as well as a loss by parting with what one has ..." R v Zaman [2002] EWCA Crim 1862, considered whether the words "with a view to" have the same meaning as "with intent to" in section 92 - and concluded, dismissing the appeal, that they did not.

Business

There is a requirement in some criminal law covering Intellectual Property, as detailed in the above sections of this guidance, to demonstrate that an illegal activity is carried out in the course of a business and the words used in the Trade Marks Act 1994 are similar to those used in the Trade Descriptions Act 1968.

Defences

Section 92(5) TMA - 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.

The existence of the reason to believe, and of the belief founded on it, is ultimately a question of fact to be tried on evidence and the grounds on which the person acted must be sufficient to induce in a reasonable person the required belief; see in particular McArdle v Egan (1933) 150 LT 412, [1933] All ER Rep 611 CA; Nakkuda Ali v Jayaratne [1951] AC 66; Registrar of Restrictive Trading Agreements v W H Smith & Son Limited [1969] 3 All ER 1065 at 1070, [1969] 1 WLR 1460 at 1468, CA, per Lord Denning MR; and IRC v Rossminster Ltd [1980] AC 952, [1980] 1 All ER 80 at 84, 92, 93, 103, 104, HL. (From Halsbury's Laws on TMA section 92).

Evidential issues in trade mark cases

As a registered trade mark certificate is a public document it is "... admissible in evidence on its mere production ..." - see Section 14, Evidence Act 1851.

A certified copy of the entry on the trade mark register may be produced - see Section 63 TMA. Production needs to have regard to the fact that the register is computerised material - see also Houghton v Liverpool City Council [2000] Crim.L.R. 574.

Due to Section 60 of The Youth Justice and Criminal Evidence Act 1999 – Section 69 ofthe Police and Criminal Evidence Act 1984 (PACE) ceased to have effect from 14 April 2000. Computer evidence now must follow the common law rules; there is a presumption of reliability.

Fraud Act 2006

The Fraud Act creates an offence of fraud. Additionally it creates offences of making or possessing articles for use in or in connection with fraud, and making or supplying articles for use in fraud. Fraud can extend to the sale of counterfeit goods per se, particularly if sold as genuine, or sold at the same price as the genuine product. In addition the possession, use or sale of chipping or copying equipment could also give rise to offences contrary to the Fraud Act.

Section 2 Fraud Act covers fraud by false representation. This offence requires dishonesty in making a false representation, an intention to make a gain for oneself or another or an intention to cause loss to another or expose another to a risk of loss. The representation can be direct or implied, so a trade mark falsely applied to goods could constitute either a direct or implied representation as to the trade origin or manufacture of the goods. The maximum sentence on indictment is 10 years' imprisonment and/or an unlimited fine.

Section 6 Fraud Act covers possession of any article(s) for use in the course of or in connection with any fraud.

Illicit recording in cinemas

This is where individual's illegally record films they are watching in the cinema, using their mobile phone, a camcorder or other sophisticated recording device.

Section 6 of the Fraud Act has been successfully used to prosecute a number of offenders for illicit recording (also known as camcording).

The Copyright, Designs and Patents Act 1988 only criminalises commercial acts of illicit recording. The key difficulty historically has been the building of a prosecution case in the absence of proof of a commercial activity. There is typically no available evidence at the time of detection to show that a suspect is acting in the course of a business, or intends to upload the film to the internet rather than (as is often claimed) simply recording the film for personal use.

The prerequisite under Section 6 of the Fraud Act is that there must be evidence that a suspect was acting dishonestly and had an intention to make a gain for himself or another or cause loss to another or expose another to a risk of loss in money or other property. By covertly recording a film, the individual concerned has made a gain (effectively stealing the intellectual property in the film and being able to watch it again or sell it on) and the owners of the cinema and the producers of the film have suffered a loss in being deprived of their intellectual property and future potential revenue.

Section 7 Fraud Act covers the offence of making or supplying articles for use in fraud. This section could extend to counterfeit goods or the manufacture or supply of chipping or copying equipment.

Section 8 of the Fraud Act extends the meaning of "article" for the purposes of section 6 and 7 so as to include any program or data held in electronic form.

For further information prosecutors should refer to the legal guidance on the Fraud Act 2006.

Common Law Offence of Conspiracy to Defraud

The Attorney General issued guidance first published on the 9 January 2007 on the use of the common law offence of conspiracy to defraud. The updated guidance published on the 29 November 2012 sets out the situations in which it maybe appropriate to use the common law offence rather than the statutory offences. See Attorney General's Guidance of 29 November 2012.

Prosecutors will need to specify why this charge is being chosen as opposed to any other and will need management approval to charge, as well as complete monitoring forms.

Video Recordings Act 2010

The Video Recordings Act 2010 repealed and revived provisions of the Video Recordings Act 1984. It applies to all video media, including CDs and DVDs, the 1984 Act was introduced in order to help classify and label video works.

The Act contains a number of criminal offences in Sections 9 - 14.

Prosecutors should refer to the legal guidance on the Video Recordings Act 1984 and 2010.

Confiscation and the Proceeds of Crime Act 2002 (POCA)

If a person is suspected of having committed an Intellectual Property offence and that person is also suspected of having concealed , disguised, converted, transferred or removed their criminal property from the UK, consider using POCA Section 327 (money laundering).

Almost all offences under the Trade Marks Act and CDPA are Schedule 2 lifestyle offences. Prosecutors should refer to the legal guidance on:

London 2012 Olympic Games and Paralympic Games

All of the official names, phrases, trade marks, logos and designs related to the London 2012 Games and the Olympic and Paralympic Movements (collectively referred to as the Games Marks) are protected by law in a variety of ways.

The Games Marks are legally protected by a combination of registered trademarks, copyright, registered community designs, and common law. In the UK, special laws have also been passed to give extra protection to some of the Games Marks: the Olympic Symbol etc. (Protection) Act 1995 protects the Olympic and Paralympic symbols, mottos and various words. Added protection is provided by the London Olympic Games and Paralympic Games Act 2006.

For more detailed information on these special laws, download the London Organising Committee of the Olympic Games and Paralympic Games Limited document on statutory marketing rights.

Search, seizure and retention of material

The provisions particularly relevant to trade mark and copyright investigations are Part 2 of Criminal Justice and Police Act 2001 (Powers of Seizure), the Criminal Justice and Police Act 2001 (Powers of Seizure) Order 2003 and revised PACE Code B.

Sections 50 and 51 Criminal Justice and Police Act 2001 allows for the seizure and removal of property where it is not practicable to complete a process of examination, searching or separation at the scene.

Forfeiture

Specific provisions exist under trade mark, copyright, video recordings and weights and measures legislation for the forfeiture of items. Where goods, materials or articles - which are connected with 'relevant' offences - come into possession of any person, that person may apply for a forfeiture order. The application may be made as part of proceedings or by way of complaint.

The court must be satisfied that a relevant offence has been committed in respect of the goods etc, or a representative sample of them. It may order that the goods etc are to be destroyed or impose conditions for them to be re-manufactured.

In R v Gleeson [2001] EWCA Crim 2023, [2002] 1 Cr App R (S) 112, the defendant's computer used to copy 20 CDs at a time was forfeited.

Provisions corresponding to those in sections 97 and 98 of the Trade Marks Act 1994, allowing forfeiture of infringing goods, are inserted into the Copyright, Designs and Patents Act 1988 in respect of the offences in Sections 107(1) and (2), 198(1) and 297A and those involving dishonesty or deception. Section 97 of the 1994 Act relates to forfeiture in England, Wales and Northern Ireland and section 98 is a modified version relating to forfeiture in Scotland.

Sections 108 and 199 Copyright, Designs and Patents Act 1988 empowers a court to order infringing copies to be 'delivered up' as a result of criminal proceedings. Section 114 and Section 114A (the equivalent of section 114B for Scotland) deals with forfeiture of infringing copies.

Deprivation

Powers of the Criminal Courts (Sentencing) Act 2000 Sections 143 - 145 (derived from the Powers of the Criminal Courts Act 1973 Section 43).

A court may make an order to deprive a convicted defendant of property which has been lawfully seized or which was in the defendant's possession or under his control, when the property was used, or intended to be used, for the purpose of committing or facilitating the commission of an offence.

Further reading