Background
Marshall Group AB and Marshall Amplification PLC sued OWGH Limited over its offers for sale and sales of Marshall Major V headphones through Amazon UK. The claim concerned registered MARSHALL word and device marks, and the MAJOR word mark, registered for headphones and related goods and services. The registered proprietor was Marshall Amplification PLC; Marshall Group AB was its UK licensee.
The defendant did not attend trial after its solicitors were permitted to come off the record because fees remained unpaid. The court nevertheless proceeded under CPR 39.3. Marshall’s test purchases from OWGH were inspected against genuine products. Their serial numbers were absent from Marshall’s internal product-record system, and the products and packaging displayed multiple physical differences from genuine headphones.
The Court’s Holding
Miss Charlotte May KC, sitting as a Deputy High Court Judge, gave judgment for the claimants. She found that the test-purchase headphones sold by OWGH were counterfeit and that OWGH had used signs identical to the registered marks in the course of trade in the UK for identical goods, without consent. That conduct infringed each mark under section 10(1) of the Trade Marks Act 1994.
Independently, OWGH failed to establish exhaustion under section 12(1). It could not show that the specific headphones had been placed on the UK or EEA market by, or with the unequivocal consent of, the claimants. Evidence that Marshall goods were generally available through resellers and retailers did not prove consent for these particular goods. The court did not need to determine the alternative section 10(2) claim, the section 12(2) issue, or passing off.
Key Takeaways
- A seller relying on trade mark exhaustion must prove consent for the specific goods at issue.
- Sales of similar genuine goods in the UK or EEA do not establish exhaustion for other goods carrying the same mark.
- Missing manufacturer serial-number records, together with product and packaging discrepancies, supported the finding that the headphones were counterfeit.
Why It Matters
The decision illustrates the evidential burden on marketplace sellers sourcing branded goods through intermediaries. A belief that goods originated within the UK or EEA, without evidence tracing the particular goods to authorised placement on that market, will not establish exhaustion.
It also confirms that a trade mark owner may succeed under section 10(1) where counterfeit goods bear identical marks and are sold for identical registered goods. The court proceeded despite the defendant’s absence, while noting its ability to seek to set aside any resulting judgment or order under CPR 39.3(3).