Courts in Europe are well used to the music and film industries seeking orders blocking access to websites on the basis of copyright infringement. Now, in what is believed to be the first case of its kind anywhere in the EU, the English High Court has granted an order requiring the five main retail internet service providers (ISPs) in the UK to block access to websites that advertise and sell counterfeit products on the basis of trade mark infringement.
Richemont, owner of luxury brands Cartier and Montblanc and the associated trade marks, brought the test case in a move to combat trade mark infringement online. As Mr Justice Arnold put it, “the internet has become an increasingly important channel of trade in counterfeit goods.”
Having reviewed the law in the area, the judge was satisfied that the court had jurisdiction under the Intellectual Property Enforcement Directive and the applicable English law to grant website blocking injunctions against ISPs to prevent trade mark infringement. This is because it is via the ISPs’ services that the advertisements and offers for sale of counterfeit goods are communicated to 95% of broadband users in the UK.
The judge was satisfied that alternative remedies would not be as effective as a blocking order. In this regard, the judge pointed to evidence which showed that the UK has experienced a significant decrease in traffic to blocked websites which infringe copyright. He saw no reason why the same result could not be achieved by blocking access to websites that infringe trade marks.
In order to ensure that such blocking orders would not be abused by trade mark owners, the judge imposed a number of safeguards. Firstly, ISPs, operators of websites and internet users may apply to court to discharge or vary the orders. Secondly, if a website is blocked by a blocking order then it should identify the party which obtained the order and state that affected users have the right to apply to the court to lift the order. Thirdly, the orders should not last any longer than necessary; the judge was of the provisional view that a blocking order should last for two years, unless the court orders that it be continued.
This case is an important victory for brand owners across Europe. It seems likely that similar applications will be brought by trade mark owners, both in the UK and in other countries. Irish brand owners seeking to combat the sale of counterfeit goods online should take note.