In a landmark decision, the High Court has confirmed a trademark holder can obtain an order against internet service providers (ISPs) to block access to websites selling counterfeit goods.
The case was brought by French luxury jeweller, Cartier, in relation to six websites selling fake versions of its products. Cartier asked the Court to order a range of household ISPs, including Sky, BT, EE, TalkTalk and Virgin, to block access to the offending websites.
However, whilst there is a clear right in UK law to seek orders relating to websites used for copyright infringement – more on the lines of piracy – prior to this ruling, there was no such clear route in relation to websites used for selling fake trademark goods, essentially counterfeiting.
Nevertheless, the Court had regard to EU legislation with which the UK is required to comply, to deem itself as having the ability to make such blocking orders in counterfeiting claims too. It therefore granted Cartier the blocking order, which the ISPs must now implement.
Whilst the ruling was made in the context of trademarks, the logic applied by the Court paves the way for use also in the context of other forms of intellectual property rights, such as design rights.
Interestingly, just one week after the Cartier judgement, the High Court has also granted its most widespread blocking order against torrent websites used for peer-to-peer transfer of music. The order covers twenty one websites in total, and was largely uncontested by the ISPs against whom it was made.
Both decisions will be welcomed by those with applicable intellectual property rights at risk of infringement online, providing another weapon to your arsenal when combating the counterfeiting and piracy trades.
Taylors' Intellectual Property team, led by Tony Catterall, is recognised nationally and internationally for its expertise and experience in protecting and enforcing the rights of designers, particularly in the textiles, fashion, home furnishings and software sectors. It has won many notable and key cases in the High Court, Court of Appeal and Supreme Court against major corporates. Taylors is the only North West-based firm to have been appointed as a Legal Affiliate to the national organisation, Anti-Copying in Design (ACID).
If you have any queries, please do not hesitate to contact Tony Catterall, Head of our Intellectual Property team, on 0844 8000 263 or via email email@example.com.