THE RETAIL BULLETIN - The home of retail news
Lest we forget
HOME
RETAIL NEWS
RETAIL EVENTS
Fashion
Department Stores
Shopping Centres & Retail Parks
Home & DIY
Electricals
Health & Beauty
General Merchandise
Entertainment
Sports & Leisure
Retail Solutions
Food & Drink
Interviews
RETAIL INSIGHTS
RETAIL SOLUTIONS
ABOUT US
CONTACT US
SUBSCRIBE FOR FREE
HOME  |  LEGAL
Cartier, Montblanc and IWC win an injunction blocking access to counterfeit websites

Richemont, the owners of luxury brands Cartier, Montblanc and IWC (among others) has obtained an order in the High Court requiring the main five UK internet service providers (ISPs) to block access by their subscribers to six websites which advertise and sell counterfeit goods under Richemont's trade marks. By Hillary Atherton Associate, Bird and Bird.

LEGAL

Cartier, Montblanc and IWC win an injunction blocking access to counterfeit websites

Richemont, the owners of luxury brands Cartier, Montblanc and IWC (among others) has obtained an order in the High Court requiring the main five UK internet service providers (ISPs) to block access by their subscribers to six websites which advertise and sell counterfeit goods under Richemont's trade marks. By Hillary Atherton Associate, Bird and Bird.

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.

What next?

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.

 

Email this article to a friend

You need to be logged in to use this feature.

Please log in here

Subscribe For Retail News

RETAIL EVENTS

The Retail Design Seminar 2018
The Retail Design Seminar 2018
14 November 2018
The Cavendish Conference Centre
The Retail Design Seminar 2018
Omnichannel Futures Conference 2019
Omnichannel Futures Conference 2019
6 February 2019
Cavendish Conference Centre, London WG1 9DT
A truly omnichannel offering requires an understanding of customer behaviour across all shopping channels and how this should impact your overall business strategy
Customer Engagement Conference 2019
Customer Engagement Conference 2019
5 June 2019
Cavendish Conference Centre, London W1
The 10th Annual Retail Customer Engagement Summit
AI in Retail Conference 2019
AI in Retail Conference 2019
18 September 2019
Cavendish Conference Center, 22 Duchess Mews, London W1G 9DT
Retail marketing is changing pace rapidly by making communication across all platforms personalised, relevant, efficient, and helpful. AI not only helps shoppers find a perfect product but also pre-empts the shopping behaviour and speeds up payment.
The HR Summit 2019
The HR Summit 2019
Tuesday 8 October 2019
The Cavendish Conference Centre, London W1
The 11th HR Summit 2019, The Cavendish Conference Centre, London W1, 8 October 2019