R v Johnstone - Clarification and Uncertainty

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.