QUEEN'S BENCH DIVISION
Strand, London, WC2A 2LL
B e f o r e :
| UNIC CENTRE SARL (A COMPANY)
|- and -
|(1) THE LONDON BOROUGH OF BRENT & HARROW TRADING STANDARDS SERVICE
(2) HARROW CROWN COURT
Smith Bernal Reporting Limited, 180 Fleet Street
London EC4A 2HD
Tel No: 0171 421 4040, Fax No: 0171 831 8838
Official Shorthand Writers to the Court)
Simon Mehigan QC (instructed by the London Borough of Brent & Harrow)
for the Respondents
Crown Copyright ©
"In our view once proceedings have been brought the order by the magistrates was an order which they were entitled to make within their powers under S.97(2)(a) and being made on application by the respondents in court on the basis that the agreement between the parties to the criminal proceedings, it was made within the criminal jurisdiction of the court. In view of our finding we do not need to go on to consider the many interesting questions which might have arisen under the Convention, but would have to go on to consider in the course of a rehearing the evidence on other issues which may be outstanding."
"97(1)In England and Wales or Northern Ireland where there has come into the possession of any person in connection with the investigation or prosecution of a relevant offence -
(a)goods which, or the packaging of which, bears a sign identical to or likely to be mistaken for a registered trademark,
(b)material bearing such a sign intended to be used for labelling or packaging goods, as a business paper in relation to goods, or advertising goods, or
(c)articles specifically designed or adapted for making copies of such a sign, that person may apply under this section for an order for the forfeiture of the goods, material or articles.
(2)Application under this section may be made -
(a)where proceedings have been brought in any court for a relevant offence relating some or all of the goods, material or articles, to that court;
(b)where no application for the forfeiture of goods, material or articles has been made under paragraph (a), by way of complaint to a magistrates court.
(3)On an application under this section the court shall make an order for the forfeiture of any goods, material or articles only if it is satisfied that a relevant offence has been committed in relation to the goods, material or articles.
(4)A court may infer for the purposes of this section that such an offence has been committed in relation to any goods, material or articles, if it is satisfied that such an offence has been committed in relation to goods, material or articles which are representative of them (whether by reason of being of the same design or part of the same consignment or batch or otherwise).
(5)Any person aggrieved by an order made under this section by a magistrates court, or by a decision of such a court not to make such an order, may appeal against that order or decision -
(a)in England and Wales, to the Crown Court;
(b)in Northern Ireland, to the county court;....
(6)Subject to sub-section 7, where any goods, material or articles are forfeited under this section they shall be destroyed in accordance with such directions as the court may give.
(7)On making an order under this section the court may, if it considers it appropriate to do so, direct that the goods, material or articles to which the order relates shall (instead of being destroyed) be released, to such person as the court may specify, on condition that that person -
(a)causes the offending sign to be erased, removed or obliterated and,
(b)complies with any order to pay costs which may be made against him in the proceedings for the order for forfeiture.
(8)For the purposes of this section a "relevant offence" means an offence under S.92 above (unauthorised use of trademark, etc. in relation to goods) or under the Trade Descriptions Act l968 or any offence involving dishonesty or deception."
"(1)Where infringing goods, material or articles have been delivered up in pursuance of an order under S.l6, an application may be made to the court -
(a)for an order that they may be destroyed or forfeited to such person as the court may think fit or
(b)for a decision that no such order should be made.
Sub-section (3) provides:
"(3)Provision shall be made by rules of court of the service of notice
of persons having an interest in the goods, material or articles, and any such person is entitled -
(a)to appear in proceedings for an order under this section, whether or not it was served with notice, and
(b)to appeal against any order made, whether or not he appeared; ..... "
It follows that relief by way of forfeiture can be obtained by a registered trademark proprietor or licensee, according to his choice, in proceedings commenced in the High Court, S.16-19, or in the magistrates court (S.97).
The l968 Brussels Convention, in company with other Conventions, was incorporated into English law by S.2 of the Civil Judgments and Jurisdiction Act l982. S.3 of the l982 Act provides:-
"3(1)Any question as to the meaning or effect of any provision of the conventions shall, if not referred to the European Court in accordance with the l97l Protocol, be determined in accordance with the principles laid down by and any relevant decision of, the European Court.
(2)Judicial notice shall be taken of any decision of or expression of opinion by, the European Court on any such question.
(3)Without prejudice to the generality of sub-section (1), the following reports (which are reproduced in the official journal of the Communities) namely -
(a)the report by Mr P Jenard on the 1968 Convention and the l971 Protocol; and
(b)the report by Professor Peter Schlosser on the Accession Convention,
may be considered in ascertaining the meaning or effect of any provision of the Convention and shall be given such weight as is appropriate in the circumstances."
"This Convention shall apply in civil and commercial matters whatever the nature of the court or tribunal. It shall not extend, in particular, to revenue, customs or administrative matters. The Convention shall not apply to ....... "
"As Article l serves to indicate the area of application of the Convention it is necessary, in order to ensure, as far as possible, that the rights and obligations which derive from it for the contracting states and the persons to whom it applies are equal and uniform, that the terms of that provision should not be interpreted as a mere reference to the internal law of one or other of the states concerned.
By providing that the Convention shall apply 'whatever the nature of the court or tribunal' Article l shows that the concept 'civil and commercial matters' cannot be interpreted solely in the light of the division of jurisdiction between the various types of courts existing in certain states.
The concept in question must therefore be regarded as independent and must be interpreted by reference, first, to the objectives and scheme of the Convention and, secondly, to the general principles which stem from the corpus of the national legal systems.
If the interpretation of the concept is approached in this way, in particular for the purpose of applying the provisions of Title III of the Convention, certain types of judicial decision must be regarded as excluded form the area of application of the Convention, either by reason of the legal relationships between the parties to the action or of the subject matter of the action.
Although certain judgments given in actions between a public authority and a person governed by private law may fall within the area of application of the Convention, this is not so where the public authority acts in the exercise of its powers.
Such is the case in a dispute which, like that between the parties to the main action, concerns the recovery of charges payable by a person governed by private law to a national or international body governed by public law for the use of equipment and services provided by such body, in particular where such use is obligatory and exclusive.
This applies in particular where the rate of charges, the methods of calculation and the procedures for collection are fixed unilaterally in relation to the users, as is the position in the present case, where the body in question unilaterally fixed the place of performance of the obligation at its registered office and selected the national courts with jurisdiction to adjudicate upon the performance of the obligation."
"The Committee did not specify what is meant by civil and commercial matters, nor did it point to a solution of the problem of classification by determining the law according to which that expression should be interpreted."
" ... it follows from the text of the Convention that civil and commercial matters are to be classified as such according to their nature, irrespective of the character of the court or tribunal which is seized of the proceedings or which has given judgment. This emerges from Article l, which provides that the Convention shall apply to civil and commercial matters 'whatever the nature of the court or tribunal'. The Convention also applies irrespective of whether the proceedings are contentious or non-contentious. ... The Convention covers civil proceedings brought before criminal courts, both as regards decisions relating to the jurisdiction and also as regards the recognition and enforcement of judgments given by criminal courts in such proceedings."
"The convention also applies to civil or commercial matters brought before administrative tribunals".
"The expression 'civil or commercial matters' is very wide and does not include only those matters which fall within the jurisdiction of civil tribunals and commercial tribunals in countries where administrative tribunals also exist. Otherwise there would be a wholly unjustifiable inequality between contracting states: service abroad of judicial instruments could take place on a wider scale of countries which do not have administrative tribunals than for countries which have them. In brief, the Convention is applicable from the moment when private interests become involved."
"The solution adopted implies that all litigation and all judgments relating to contractual or non-contractual obligations which do not involve the status or legal capacity of natural persons, wills or succession, rights in property arising out of a matrimonial relationship, bankruptcy or social security, must fall within the scope of the Convention, and that in this respect the Convention should be interpreted as widely as possible."
"The distinction between civil and commercial matters on the one hand and matters of public law on the other is well recognised in the legal systems of the original member states and is, in spite of some important differences, on the whole arrived at on the basis of similar criteria. Thus the term 'civil law' also includes certain important special subjects which are not public law, especially, for example, parts of labour law. For this reason the draughtsmen of the original text of the l968 Convention, and the Jenard Report, did not include a definition of civil and commercial matters and merely stated that the l968 Convention also applies to decisions of criminal and administrative tribunals, provided they are given in a civil or commercial matter, which occasionally happens. In this last respect, the accession of three new member states presents no additional problems, but as regards the main distinction referred to earlier, considerable difficulties arise."
"The Working Party considered it obvious that criminal proceedings and criminal judgments of all kinds are excluded from the scope of the l968 Convention, and that this matter needed, therefore, no clarification in the revised text (see paragraph l7). This applies not only to criminal proceedings stricto sensu. Other proceedings imposing sanctions for breaches of orders or prohibitions intended to safeguard the public interest also fall outside the scope of civil law. Certain difficulties may arise in some cases in classifying private penalties known to some legal systems, like contractual penalty clauses, penalties imposed by associations, etc. Since in many legal systems criminal proceedings may be brought by a private plaintiff, a distinction cannot be made by reference to the party which instituted the proceedings. The decisive factor is whether the penalty is for the benefit of the private plaintiff or some other private individual. Thus the decisions of the Danish industrial courts imposing fines, which are for the benefit of the plaintiff or some other aggrieved party, certainly fall within the scope of the l968 Convention."