Criminal Proceedings under The Trade Marks Act 1994 – When is this the right route?

Written by Margaret Briffa | November 19, 2020

IP Disputes

It is a fact of business life that not all employees will stay with your business for the whole of their career and this is so even where you have trained someone from scratch in all the valuable skills to succeed. The law recognises the need for employees to be able to employ their skills elsewhere and it is established that an employee may use the skills learnt with one employer when they leave employment for the benefit of another business. What they cannot take is an employer’s intellectual property.

When we work in this area the most common type of complaint is that the employee has taken ‘confidential information’ belonging to the employer. This is because what is and what is not confidential information is in many businesses more difficult to establish than with other forms of intellectual property where the rights are clearer cut. For tips on how to protect yourself as an employer see our blog.

Although these disputes can arise at a difficult time for the business, for the most part we are able to settle them on a commercial basis, either before or after the issue of civil proceedings. Less common in the employer/employee arena is the use of the criminal provisions in the Trade Marks Act 1994 to prevent the illegal use of intellectual property but a recent case illustrates the effectiveness of these provisions in the right circumstances.

In a case brought by trading standards, Daniel Cooke was sentenced to a community order and to pay costs having been found guilty of six offences under the Trade Marks Act 1994. Cooke had been an employee of Robert Thompson’s Craftsmen having joined in 2009 as an apprentice. Robert Thompson’s use the distinctive ‘mouseman’ trade mark’ carved into their products. A 2D version was registered as a trade mark in respect of wooden furniture in 1931. When Cooke left the company in 2017 and turned his hand to making and selling items on eBay which bore the distinctive ‘mouseman’ mark his ex-employer became suspicious. The products did not look quite as good as their own.

It purchased products to take a closer look and reported the matter to its local trading standards office who took up the investigation which led to product being seized and the resulting conviction. All this was achieved in a matter of weeks and at little cost to the employer. While Robert Thompson Craftsmen did not recover damages from Cooke, they certainly managed to stop the illegal activity and preserve their reputation for fine craftmanship. This, at its heart, is what many intellectual property legal actions are about and in this case the criminal route appears to have been a good choice.

Written by Margaret Briffa, Solicitor

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