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Countering the Counterfeiters

Brand owners fight back

In a judgment handed down yesterday, the Court of Appeal confirmed that the UK High Court has jurisdiction to make a website blocking order in cases involving infringement of registered trade marks.

It brings the exercise of the court’s powers in counterfeit goods cases into line with the established practice of making blocking orders in copyright infringement cases.

The decision will be welcomed by substantial brand owners who face the continuous battle against counterfeit traders who are numerous and often difficult to trace.

It affirmed orders made in 2014 by Mr Justice Arnold requiring Sky, BT, EE, TalkTalk and Virgin to block or attempt to block access by their customers to websites advertising and selling counterfeit Cartier and Montblanc products.

Although the Court of Appeal recognised that the ISPs were not guilty of any wrongdoing, it held that Article 11 of Council Directive 2004/48/EC (the Enforcement Directive) provided a principled basis for extending the practice of the court in relation to the grant of injunctions to encompass, where appropriate, the services of an intermediary, such an ISP, which have been used by a third party to infringe a registered trade mark. It recognised that, pursuant to general equitable principles, this was one of those new categories of case in which the court may grant an injunction when it is satisfied that it is just and convenient to do so, in exercise of the wide powers provided to it by section 37(1) of the Senior Courts Act 1981.

The judgment also confirmed that ISPs should bear the costs of implementation of website blocking orders.

It is estimated that 10% of global trade is in counterfeit goods (source: UK IP Crime Group). In this case, the evidence of Richemont (owner of the Cartier and Montblanc brands) was that it had identified approximately 239,000 potentially infringing websites of which approximately 46,000 had been confirmed as infringing. This gives an idea of the general scale of the problem and the difficulties of enforcement against individual infringers.

It is likely that brand owners who have been waiting in the wings for this judgment will come forward to avail themselves of a remedy which is set to become a vital weapon in the fight against the counterfeit trade.

Chris Pearson / 7th Jul 2016


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