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Home > News > Grey Market Update: a criminal offence under UK trade mark law

Grey Market Update: a criminal offence under UK trade mark law

11 August 2017 |

The Supreme Court of England and Wales confirmed last week that brand owners are able to use the criminal provisions of the Trade Marks Act 1994 to go after distributors of grey market goods (products that are original, but traded without authorisation).

In R v M and Ors. [2017] UKSC 58 the distributors in question were shifting large numbers of Ralph Lauren, Adidas, Jack Wills, Under Armour, and Fred Perry products in the UK. All of which were manufactured abroad, all of which were, however, original. The brands in question had not given permission for the goods to be sold in the UK.

It is well established that there would be criminal penalties if the goods were counterfeit. This case has now confirmed that even if they aren’t, the criminal provisions of the TMA 1994 can still apply in respect of grey goods. This is of course in addition to civil remedies available under the same act for marks that have not been exhausted (i.e. not put onto the market in the EU with the brand owner’s consent).

The threat of prosecution is a useful tool in shutting down grey goods markets. Supply chains these days increasingly involve factories based in the East and it is not uncommon to hear of ‘bonus’ product runs, or leaky lorries. Whilst this ruling will not help tackle the problem at its root, it will go some way in sealing up the retail market here in the UK.

If you have had any issues with unauthorised sales of your products we would be happy to talk you through your options. Get in touch with our expert Chris Haywood.

The contents of this article are intended for general information purposes only and shall not be deemed to be, or constitute legal advice. We cannot accept responsibility for any loss as a result of acts or omissions taken in respect of this article.

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