R (on the application of Drain) v Birmingham Crown Court and others

The Claimant applied for judicial review to quash a forfeiture order in respect of made under s.97 of the Trade Marks Act 1994 (TMA 1994) at Birmingham Crown Court. The forfeited goods were ornamental metal plaques featuring the images and trade marks of various classic cars.

The Claimant was tried at Birmingham Crown Court on 15 counts of unauthorised possession custody or control of goods bearing a sign identical to or likely to be mistaken for a registered trade mark with the consent or connivance of a company director or secretary contrary to s.92(1)(c) and s.101(5) TMA 1994. The jury were unable to reach a verdict. The prosecution (Birmingham City Council) decided not to seek a retrial and a not guilty verdict was entered on 18th May 2016

The Claimant argued that the forfeiture order should be quashed on the grounds that a forfeiture order under s.97 TMA 1994 should not be made following an acquittal. It was submitted that a forfeiture order was incompatible with the Claimant’s rights under Article 1 of the First Protocol (“A1P1”) to the European Convention on Human Rights and thus disproportionate.

The Department for Business, Energy & Industrial Strategy (‘BEIS’) is the department with responsibility for the Trade Marks Act 1994. It applied to intervene by letter of 19th March 2018 on the issue of compatibility of s.97 of the Trade Marks Act 1994 with Convention rights.

Was a forfeiture order in respect of goods under s.97 Trade Marks Act 1994 that was made following an acquittal incompatible with the Claimant’s rights under Article 1 of the First Protocol (“A1P1”) to the European Convention on Human Rights and thus disproportionate?

The fact that there had been no conviction before the Crown Court was not in itself a bar to an application for a forfeiture order;  a forfeiture application of the instant kind constituted separate civil proceedings ( following  R. v Harrow Crown Court Ex p. UNIC Centre Sarl [2000] 1 W.L.R. 2112).

By virtue of section 97(3)  the court can only make an order for forfeiture if satisfied that a relevant offence had been committed in relation to the goods in question. Thus, there was nothing to prevent a forfeiture order being made in relation to goods even where there had been an acquittal, provided the court was satisfied on the balance of probabilities that a relevant offence had been committed.

Section 97(3)conferred on the court a power to order forfeiture but did not entail any obligation to do so, even if the court was satisfied that a criminal offence had been committed. Given that conclusion, the argument in relation to Protocol 1 art.1 fell away. Section 97(3) was not incompatible with Protocol 1 art.1, nor did it have to be read in such a way as to give effect to that provision,

No submissions had been made to the trial judge below  she was wrong in law to proceed on the basis that she had no discretion under s.97(3) or that  under s.97, sub-s.(6) and (7) there was a discretion as to whether the goods forfeited should be destroyed or released to a specified person, subject to conditions.

The Court noted at para [33] that is found it hard to see how there can be a valid claim for judicial review at all of a decision when the judge was never required to confront the issue put before this court.