The UK High Court has made its first website-blocking order to fight trade mark infringement and the sale of counterfeit goods.
Over the last few years, website-blocking orders have been obtained by music and film copyright owners to block access for streaming and downloading. However, this is the first time a website-blocking order has been used in Europe in respect of counterfeit goods and trade mark infringement.
Richemont International SA owns a large number of UK registered trade marks, such as the luxury brands Cartier and Montblanc.
Richemont applied for orders requiring the internet service providers Sky, BT, EE, TalkTalk and Virgin (the ISPs) to block access to six websites that advertised and sold counterfeit goods targeted at UK consumers.
The court was satisfied that this was a clear case of trade mark infringement, but it needed to determine whether it had jurisdiction to order the ISPs to block access to those websites.
The Intellectual Property Rights Enforcement Directive obliges member states to make remedies available to enforce the intellectual property rights, including copyright and trade marks.
This provides for the availability of injunctions against infringers, and also says that rights holders should be able to apply for an injunction against intermediaries whose services are used by a third party to infringe an intellectual property right.
Although the part of the Intellectual Property Rights Enforcement Directive which provides for the availability of injunctions against intermediaries had not been implemented into UK law, the court was satisfied that it nevertheless can grant an injunction where it is just and convenient to do so. This applies not only to injunctions against infringers, but also to website-blocking injunctions against intermediaries, which was consistent with the Directive.
Sales of counterfeit products on third-party websites, such as eBay, can be tackled relatively easily and quickly, using takedown processes such as eBay’s Verified Rights Owner (VeRO) programme.
However, counterfeiters often sell infringing products through their own websites, many of which are designed to look just like the brand owner’s website. They also use domain names which include the brand name to suggest that the website is legitimate.
There are various ways in which brand owners can try to address this, but none are particularly effective. “Cease and desist” letters are rarely effective against offshore websites, and neither is formal legal action because websites can be easily relocated and relaunched. Brand owners may be able to bring domain name complaints, which can result in the domain name being cancelled or transferred, but websites can quickly be moved to a new domain. Under EU laws, website hosting providers are not liable for the websites that they host unless, once they are made aware of the illegal activity, they fail to act expeditiously to remove or disable access to the site. However, while legitimate hosting providers act on genuine takedown requests, the operators of rogue websites can simply migrate to a new host, including one based outside the jurisdiction that does not observe takedown notices. To be able to block the offending website(s) at the ISP level, therefore, can be quite an effective remedy.
A new weapon for rights holders
This is a test case which is likely to be followed by other brand owners tackling counterfeits. While a website-blocking order is not a complete solution, as it does not actually take down the offending website, it could prove more effective – albeit at a higher cost – than other enforcement options as an action against the five main UK ISPs covers a large percentage of UK broadband users.