Is selling copy/fake/counterfeit/replica goods legal?

prowla

Thanks for the info, all.

Actually, the situation is that I said someone else's for sale posting on Facebook of an instrument made by a company called Limelight and bearing a Fender logo was a counterfeit.

The sale in question showed it with some brown paper over the logo, and someone asked why it was covered, so which I replied it was a counterfeit.

(I know it has the logo because a. the instrument is for sale elsewhere without it being covered up, and b. the text description says it has a Fender logo on it.)

The seller was adamant that it wasn't a counterfeit because they'd openly said it had a logo applied, insulted me, and also pursued me to another site to argue the point via DM. I simply restated the fact that it is a counterfeit.

When someone asked why they'd covered the logo up then, they replied that it was to protect the site and also pointed out that its maker's site didn't show the headstocks on any of their instruments.

Now, this instrument is up for sale at £900 and it is of similar quality to a real Fender, so it's not an "upbranded" cheap item.

However, it is still a counterfeit.

I was looking for either the actual law (or case law) to prove that unequivocally, but so far I've struck-out.

prowla

Manxman_in_exile said:

theoretica said:

prowla said:

• Allowing companies to pursue misuse of their trademarks, under the UK Trade Marks Act 1994 (but nobody cares and it's not illegal if they don't take action).
  

Are you sure about that?  My understanding is that it is illegal and trading standards could take their own action.  Just as the fact that there aren't cameras enforcing the speed limit on the road near me and loads of drivers speed without consequences doesn't change what the speed limit actually is.

I believe you are correct.  The difficulty is in expecting or getting TS to do their job enforcing criminal law.  Any civil remedy that M&S (or Fender) may have is a separate issue.

(Again I'm not commenting on where the current legislation and case law is to be found).

Thanks - the law is what I'd really like to see.

robatwork said:

Interesting case as there are hundreds of companies making Strats. As long as they don't use the name Fender or Stratocaster the guitar shape itself isn't protected. Unsurprisingly, Fender tried to trademark the shape, but failed. So I think it's more about "passing off" ie. trying to make a consumer believe you're buying a Fender, with Fender parts from a Fender factory.

Keep us informed, Squire.

And if you see a worse attempt at a pun than that today I'd be surprised. 

One of my bugbears is the continual misspelling of "Squier" as "Squire"! :-)

In this case, the seller is not trying to pass it of as a genuine Fender, but whether it is actually a counterfeit anyway.

pbartlett said:

Just to be crystal clear - if you make a guitar look like a Fender, complete with Fender name etc, then you can put 14 foot neon lights above it saying "THIS IS NOT A REAL FENDER" but you still can't legally sell it.

What you CAN sell is a guitar that somewhat approximates to a Fender with a name called FENBOR 

Thanks - the thing is I can't find anything which says that.

It is a private sale, not a company.

silverwhistle

As I'm wandering out to the pub soon to watch England v Italy I thought it might be interesting to point out that in Italy they used to (may still do) prosecute the buyer of fake goods as well. Now as someone who doesn't wear a watch and is not interested in fashion I'd find it difficult to police myself as a chunky watch is a chunky watch or some pretty earrings are some pretty earrings, and a number of tourists (naturally easy prey) were caught out by this legislation.

pbartlett

Trades Marks Act 1994 section 92

People who recreate items using registered trade marks when not authorised to do so, are committing a criminal offence under the TRADE MARKS ACT 1994.

The penalties are if prosecuted and found guilty the penalties the person may face are:

A) on summary conviction imprisonment for a term not exceeding six months or a fine not exceeding the statutory maximum (£5000) or both

 on conviction on indictment to a fine or imprisonment for a term not exceeding ten years or both.

Sandtree

silverwhistle said:

As I'm wandering out to the pub soon to watch England v Italy I thought it might be interesting to point out that in Italy they used to (may still do) prosecute the buyer of fake goods as well. Now as someone who doesn't wear a watch and is not interested in fashion I'd find it difficult to police myself as a chunky watch is a chunky watch or some pretty earrings are some pretty earrings, and a number of tourists (naturally easy prey) were caught out by this legislation.

You need to be exceptionally naive to think a £20 Rolex Daytona is going to be genuine when RRP is c£10,000 if steel and double or more if gold etc. Even more so when its being sold by a guy walking around carrying his stock on a stick and stopping random people rather than being in a watch shop.

prowla

pbartlett said:

Trades Marks Act 1994 section 92

People who recreate items using registered trade marks when not authorised to do so, are committing a criminal offence under the TRADE MARKS ACT 1994.

The penalties are if prosecuted and found guilty the penalties the person may face are:

A) on summary conviction imprisonment for a term not exceeding six months or a fine not exceeding the statutory maximum (£5000) or both

 on conviction on indictment to a fine or imprisonment for a term not exceeding ten years or both.

So, section 92 (1) states:

92
Unauthorised use of trade mark, &c. in relation to goods.
(1) A person commits an offence who with a view to gain for himself or another, or with intent to cause loss to another, and without the consent of the proprietor—
(a) applies to goods or their packaging a sign identical to, or likely to be mistaken for, a registered trade mark, or
(b) sells or lets for hire, offers or exposes for sale or hire or distributes goods which bear, or the packaging of which bears, such a sign, or
(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 paragraph (b).

I think (b) there covers it.

Further, 92 (2) states:

(2) A person commits an offence who with a view to gain for himself or another, or with intent to cause loss to another, and without the consent of the proprietor—
(a) applies a sign identical to, or likely to be mistaken for, a registered trade mark to material intended to be used—
(i) for labelling or packaging goods,
(ii) as a business paper in relation to goods, or
(iii) for advertising goods, or
(b) uses in the course of a business ma

So that covers the supplier of the instrument applying the fake brand.
And the penalties are given in 92 (6):

(6) A person guilty of an offence under this section is liable—
(a) on summary conviction to imprisonment for a term not exceeding six months or a fine not exceeding the statutory maximum, or both;
(b) on conviction on indictment to a fine or imprisonment for a term not exceeding ten years, or both.

Manxman_in_exile

pbartlett said:

Trades Marks Act 1994 section 92

People who recreate items using registered trade marks when not authorised to do so, are committing a criminal offence under the TRADE MARKS ACT 1994.

The penalties are if prosecuted and found guilty the penalties the person may face are:

A) on summary conviction imprisonment for a term not exceeding six months or a fine not exceeding the statutory maximum (£5000) or both

 on conviction on indictment to a fine or imprisonment for a term not exceeding ten years or both.

But that is only applicable in the OP's case if "Fender" is a registered TM in this country.  I don't know if it is or not.  (Also I don't know if the 1994 Act you reference represents the current position or not).

OP - all you basically need to know is that somebody applying the "Fender" name to a guitar that is not a fender and then selling it is on very dodgy ground - full stop.  And it doesn't matter whether the guitar in question is higher or lower quality than a genuine fender. 

As I said earlier I could have quoted the relevant legislation and case law to you 40 years ago, but I have no idea what the current position is.  I am, however, confident it won't have changed much.

prowla

Manxman_in_exile said:

pbartlett said:

Trades Marks Act 1994 section 92

People who recreate items using registered trade marks when not authorised to do so, are committing a criminal offence under the TRADE MARKS ACT 1994.

The penalties are if prosecuted and found guilty the penalties the person may face are:

A) on summary conviction imprisonment for a term not exceeding six months or a fine not exceeding the statutory maximum (£5000) or both

 on conviction on indictment to a fine or imprisonment for a term not exceeding ten years or both.

But that is only applicable in the OP's case if "Fender" is a registered TM in this country.  I don't know if it is or not.  (Also I don't know if the 1994 Act you reference represents the current position or not).

OP - all you basically need to know is that somebody applying the "Fender" name to a guitar that is not a fender and then selling it is on very dodgy ground - full stop.  And it doesn't matter whether the guitar in question is higher or lower quality than a genuine fender. 

As I said earlier I could have quoted the relevant legislation and case law to you 40 years ago, but I have no idea what the current position is.  I am, however, confident it won't have changed much.

Thanks - yes it is a registered TM in this country.

Whilst you and I "know" it, there are some people who will not be swayed by that and will argue the point (to the extent of being abusive).

Unfortunately, without citing the actual law(s), it is just opinion and there is no full-stop .

user1977

It's probably academic though - I doubt trading standards etc will feel it's worth their while swinging into action if the rights holder can't be bothered taking their own legal action about it.

CKhalvashi

pbartlett said:

Just to be crystal clear - if you make a guitar look like a Fender, complete with Fender name etc, then you can put 14 foot neon lights above it saying "THIS IS NOT A REAL FENDER" but you still can't legally sell it.

What you CAN sell is a guitar that somewhat approximates to a Fender with a name called FENBOR 

I was just going to mention something along these lines.

I have a bag used for work in a similar design to a designer brand (but with no branding at all on it, and openly sold at about £30 with no branding in Eastern Europe, other than the style it's simply a black leather-like material bag, it was bought several years ago) and this would be fine. Putting the branding of the company it's possibly meant to resemble and charging £5-600 for it would be a problem. It's hard wearing and looks professional, this is what is required and there is no point paying £100s for something like this.

In certain Eastern European countries, gopniks will wear Abibas or Abidas (other variations are available at various markets), this is legal also, just pushing things a little more. Putting a trademarked brand name on these items definitely is not without permission of the trademark owner, at which point you're at a price point where the cheapest semichki and/or pivo simply won't cut it