Cartier, Montblanc and IWC win an injunction blocking access to counterfeit websites
Why is the decision significant?
In recent years, a series of site-blocking injunctions have been granted requiring UK ISPs to prevent their customers from accessing websites which infringe copyright (typically, illegal file sharing sites infringing the copyright belonging to film studios and record companies). However, this is the first time that a site-blocking injunction has been granted requiring ISPs to restrict access in the UK to websites which infringe trade marks by offering for sale counterfeit goods. The Richemont decision gives trade mark owners a new way of protecting their brands from counterfeits.
What do I need to know?
In order to obtain a site-blocking injunction requiring ISPs to prevent access to websites selling counterfeit goods, the following conditions must be satisfied:
• the ISPs must be intermediaries;
• the users and/or operators of the website must be infringing the claimant's trade marks;
• the users and/or operators must use the ISPs' services to infringe those trade marks; and
• the ISPs must have actual knowledge of this, i.e. the trade mark owner must make the ISPs aware of the infringement.
In Richemont's case, the court ordered that a notice must appear on the blocked page identifying Richemont as the party who applied for it to be blocked. The order was also subject to a "sunset clause", meaning that it will expire after a set period of time.
It is likely that more owners of luxury brands will now seek to apply for similar blocking injunctions against websites selling counterfeit goods which infringe their trade marks. As the English courts have already shown that they are ready to protect owners of intellectual property rights from pirates and counterfeits, brand owners may in the future be encouraged to try and obtain blocking injunctions against websites which infringe their trade marks in other ways; for example, by advertising and offering for sale grey market goods. It remains to be seen whether the ISPs in the Richemont case (Sky, BT, EE, TalkTalk and Virgin) will seek to appeal the decision on the basis that it sets a precedent which could impose a heavy burden upon them. In the meantime, luxury brand owners are celebrating a victory in the perpetual battle against counterfeiters.
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