Sale of “grey” goods in the UK is a criminal offence under the Trade Marks Act 1994

Grey market goods/parallel imports are genuinely manufactured goods by the trade mark owner, for a particular jurisdiction, that are subsequently imported into a jurisdiction not authorised by the brand owner.

In this instance the “grey” branded goods in question were manufactured by the trade mark owner, but later cancelled or rejected as they were not manufactured to the brand owner’s requirements.

The Court of Appeal have confirmed, that the sale or distribution of registered trade mark goods outside the authority granted by the trade mark owner, is a criminal offence.

A person commits an offence under section 92 of the Trade Marks Act 1994 (TMA) if, with a view to gain for himself or with intent to cause loss to another, and without the consent of the trade mark owner, he; (a) applies to goods or their packaging a sign identical to, or likely to be mistaken for, a registered trade mark; (b) sells, lets for hire, offers or exposes for sale or hire, or distributes goods which bear, or the packaging of which bears, a sign identical to such a sign; (c) has in his possession, custody or control, in the course of a business, any such goods with a view to the doing of anything, by himself or another, which would be an offence under s92(1)(b).

The Grey market is legal within the EEA, whereby, the trade mark owner has exhausted his IP rights, as the branded goods have been put on the market in the European Economic Area under that trade mark by the proprietor or with his consent.

However, unauthorised sellers will now be put to proof to show why they believe the trade mark owner consented to the goods coming onto the market. If not, they risk a criminal offence, for which the maximum sentence is 10 years’ imprisonment or an unlimited fine.

If you have any queries regarding grey imports and protecting your trade mark rights, please contact Briffa. We will advise you on all aspects of protecting your IP.

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