Mujahid v Carroll
| Jurisdiction | Ireland |
| Judge | Ms. Justice Stewart |
| Judgment Date | 31 March 2017 |
| Neutral Citation | [2017] IEHC 203 |
| Court | High Court |
| Docket Number | [2016 No. 463 JR] |
| Date | 31 March 2017 |
[2017] IEHC 203
THE HIGH COURT
Stewart J.
[2016 No. 463 JR]
Intellectual property – Trade Marks Act 1996 – S. 10 (1) of the Criminal Justice (Miscellaneous Provisions) Act 1997 – Infringement of trademark – Arrest & detention – Execution of search warrants – Jurisdiction
Facts: The applicants sought an order of certiorari for quashing the two search warrants issued by the District Court in relation to the dwelling place of the first applicant and the business premises of the second applicant. The applicants argued that the learned District Court did not have jurisdiction to issue the impugned warrants because the alleged wrongdoing of which the applicants were suspected, namely, infringement of certain trademark, was not an offence in Ireland. The applicants alleged that the infringement of trademark was a civil wrong and thus, the learned District Court lacked jurisdiction under s. 10 (1) of the Criminal Justice (Miscellaneous Provisions) Act 1997 to issue the search warrants. The respondent contended that notwithstanding the lack of phrasing of s. 92 in the impugned warrants, the warrants were valid.
Ms. Justice Stewart refused to grant the desired relief to the applicant. The Court held that the learned District Judge lacked jurisdiction to issue the warrants under s. 10 of 1997 Act for a suspected breach of s. 14 of the Trade Marks Act 1996 as s. 14 did not give rise to an arrestable offence. The Court, however, observed that the anomaly referred above would not render the warrants invalid, as the error was not disconnected from s.92 in such a way that the approach adopted by the learned Judge was on an incorrect basis. The Court held that, in order to test the validity of the warrants, three criteria needed to be satisfied, namely, the legal power under which the warrants were issued, reason for issuance of power; and lack of any statement either on the face or recital of the warrants that would cast doubt on the approach of the judge issuing the warrants. The Court held that the infringement of trademark under s. 14 should be read with s. 92 as s.14 phrasing was employed to act as a description for the wrongdoing suspected under s. 92.
This is an application, dated 24th June, 2016, for an order of certiorari by way of Judicial Review quashing the decision of Judge Mary Fahy made on 25th May, 2016, at the District Court sitting in Galway, to issue two search warrants obtained by the respondent in respect of the domestic dwelling of the first-named applicant (who is the sole director of the second-named applicant) and the business premises of the second-named applicant, both of which are located in Claremorris, Co. Mayo. The warrants in question refer to alleged wrongdoing pursuant to the Trade Marks Act 1996 and were executed on 26th May, 2016. A grounding affidavit was sworn by Myles Gilvarry on behalf of the first-named applicant on 22nd June, 2016, because the first-named applicant was in Garda detention at the time and not in a position to swear the affidavit himself. An undertaking was given to furnish a verifying affidavit as soon as practicable but no such affidavit is included in the papers submitted to the Court.
Upon execution of the warrants, the respondent (who is a member of An Garda Siochana holding the rank of sergeant and based in Claremorris Garda Station) searched the two addresses named therein and seized property reasonably believed to be related to the alleged committed wrongdoing. Some or all of this property comprises of a consignment of clothing purchased from a supplier in Pakistan. The consignment entered this jurisdiction on 5th May, 2016, and was delivered to the applicants on 26th May, 2016, the same day the warrants were executed. In an affidavit sworn on 14th October, 2016, the respondent avers that he sought the warrants following an examination of the contents of this consignment, from which he concluded that they were counterfeit goods infringing upon the ‘PACIFIC MERCHANTS’ trademark currently held by Abercrombie & Fitch. A file is currently being prepared for the Director of Public Prosecutions and the applicants have not been formally charged with the commission of an offence at this time. The first-named applicant maintains his innocence of any alleged wrongdoing and also seeks an order for the return of the above mentioned property.
The relevant section of the impugned warrants reads as follows:-
‘I AM SATISFIED THAT there are reasonable grounds for suspecting that infringed goods, material or articles, namely documents, financial records, computer hard drive and clothing, evidence of, or relating to, the commission of an arrestable offence to wit infringement of a registered Trade Mark contrary to Section 14 of the Trade Marks Act 1996 and Section 92 of the Trade Marks Act 1996 (within the meaning of Section 2(1) of the Criminal Law Act 1997, as amended by section 8 of the Criminal Justice Act 2006) is to be found in a place (within the meaning of section 10(6) of the Criminal Justice (Miscellaneous Provisions) Act 1997) namely…’
Section 10 (1) of the Criminal Justice (Miscellaneous Provisions) Act 1997 (as substituted by s. 6 of the Criminal Justice Act 2006) reads as follows:-
‘If a judge of the District Court is satisfied by information on oath of a member not below the rank of sergeant that there are reasonable grounds for suspecting that evidence of, or relating to, the commission of an arrestable offence is to be found in any place, the judge may issue a warrant for the search of that place and any persons found at that place.’
Sections 14 and 92 of the Trade Marks Act 1996 reads as follows:-
‘14.—(1) A person shall infringe a registered trade mark if that person uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.
(2) A person shall infringe a registered trade mark if that person uses in the course of trade a sign where because—
(a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or
(b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association of the sign with the trade mark.
(3) A person shall infringe a registered trade mark if that person uses in the course of trade in relation to goods or services a sign which is identical with or similar to the trade mark where the trade mark has a reputation in the State and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the reputation of the trade mark.
(4) For the purposes of this section, use of a sign shall include, in particular—
(a) affixing it to goods or the packaging thereof;
(b) offering or exposing goods for sale, putting them on the market or stocking them for those purposes under the sign, or offering or supplying services under the sign;
(c) importing or exporting goods under the sign; or
(d) using the sign on business papers or in advertising.
(5) A person who applies a registered trade mark to material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services shall be treated as a party to any use of the material which infringes the registered trade mark if, when that person applied the mark, that person knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee of the registered trade mark.
(6) Nothing in the preceding provisions of this section shall be construed as preventing the use of a registered trade mark by any person for the purpose of identifying goods or services as those of the proprietor or licensee of the registered trade mark; but any such use, otherwise than in accordance with honest practices in industrial or commercial matters, shall be treated as infringing the registered trade mark if the use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or reputation of the trade mark.
92.—(1) Subject to the provisions of subsection (3), it shall be an offence for any person—
(a) to apply a mark identical to or nearly resembling a registered trade mark to goods or to material used or intended to be used for labelling, packaging or advertising goods,
(b) to sell, let for hire, offer or expose for sale or hire or distribute—
(i) goods bearing such a mark, or
(ii) material bearing such a mark which is used or intended to be used for labelling, packaging or advertising goods,
(c) to use material bearing such a mark in the course of a business for labelling, packaging or advertising goods, or
(d) to possess in the course of a business goods or material bearing such a mark with a view to doing any of the things mentioned in paragraph (a) to (c),
when that person is not entitled to use the mark in relation to the goods in question or authorised by a person who is so entitled.
(2) Subject to the provisions of subsection (3), it shall be an offence for any person to possess in the course of a business goods or material bearing a mark identical to or nearly resembling a registered trade mark with a view to enabling or assisting another person to do any of the things mentioned in subsection (1) (a), (b) or (c), knowing or having reason to believe that the other person is not entitled to use the mark in relation to the goods...
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