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Good News for UK Trademark Holders? ISPs Ordered to Block Access to Counterfeiting Websites

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In Cartier International and Others v BSkyB and others, the High Court in England, has held that trademark holders can be granted injunctions against Internet Service Providers (ISPs) to block or impede certain websites selling counterfeit goods.

The sale of counterfeit goods online is extremely damaging - the consumer will receive goods of a lower quality than expected, causing them to lose confidence in the brand's trademark. In turn, this consumer disappointment can damage the right holders' reputation and may even dilute the exclusivity of the trademark, which has usually been built by the brand over many years.

The Richemont Cartier Group brought the case against the five major ISPs in the UK - BSkyB, BT, TalkTalk and VirginMedia - who together hold 95 per cent of the broadband market. Although only six websites in particular who had marketed and sold fake versions of the Richemont Cartier Group's luxury goods were being targeted, they were said to be the first in 239,000 sites potentially infringing brands' trademarks.

Lord Justice Arnold extended the remedy of 'blocking injunctions' to trademarks for the first time, by relying on European law which provides for injunctions "against intermediaries whose services are used by a third party to infringe an intellectual property right". Site blocking injunctions against ISPs are already well established pursuant to s97A of the Copyright, Designs and Patents Act 1988 (CDPA), which implemented the European InfoSoc Directive.

The conditions which must be satisfied for a blocking injunction to be granted are essentially the same as for those under 297A of the CDPA: ISPs must be intermediaries; the claimants trademark must be infringed by the website; the users or operators of the website must use the ISPs' services to infringe the trademark; and finally the ISPs must have actual knowledge of it.

However, once those conditions are met, for the Court to make an order, the relief must be necessary, effective and dissuasive; must not be unnecessarily complicated or costly; it must avoid barriers to legitimate trade; be fair and equitable and strike a "fair balance" between the applicable fundamental rights; and be proportionate.

Regarding the extra costs involved for ISPs, Arnold J considered that it was justified since the ISPs already have the requisite technology in place to implement such site blocking injunctions.

Commenting on the decision, a Richemont Cartier Group spokesperson said:

"This case represents a positive step in the fight to protect brands and customers from the sale of counterfeit goods online. We are pleased by this judgment and welcome the Court's recognition that there is a public interest in preventing trade mark infringement, particularly where counterfeit goods are involved."

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