law
Boost in the fight against counterfeit goods
Brand owners who have the benefit of trademarks to help protect the integrity of their goods have had another boost in the ever more frustrating fight against websites openly selling counterfeit goods into the UK writes Frankie Tierney, head of dispute resolutions, cheif executive dispute resolutions department of Herrington Carmichael
The landmark High Court decision of Cartier International AG & Others –v- British Sky Broadcasting Ltd & Others was made in 2014 and required Internet service providers (ISPs) to block websites selling counterfeit goods.
The Appeal, brought by the UK’s largest broadband providers has finally been decided by the Court of Appeal and much to the dismay of the ISP’s the Court of Appeal decided to uphold the original decision.
If you have not got a trademark to protect your brand there is still the possibility of seeing if there has been a copyright infringement
The Court of Appeal confirmed that the Court did have the right to grant a website blocking order to prevent access to a website selling counterfeit goods. That even though the IPSs had done nothing wrong, the Court was entitled to adopt a flexible approach in applications for injunctions to enable intellectual property rights to be protected in the digital age.
The Appeal Court judges did set four key conditions that must be met in order for a website blocking order to be made:
• The ISPs must be intermediaries under Article 11 of the Intellectual Property Rights Enforcement Directive 2004.
• The users or the operators of the offending website must be infringing the applicant’s trademarks.
• The users or operators of the website must be using the services of the ISPs.
• The ISPs must have actual knowledge of the infringing activity.
The Court also rejected an ancillary argument raised by the ISPs that their services were not being used in the offence itself because the counterfeit goods were actually posted to the buyer after the online transaction had been completed.
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businessmag.co.uk THE BUSINESS MAGAZINE – THAMES VALLEY – DECEMBER 16/JANUARY 17
The second part of the Appeal was in relation to the decision that the ISPs rather than the people seeking to obtain the website blocking injunction should pay the costs of implementing a website blocking order. Again the ISPs were disappointed as the decision was upheld albeit on a majority of two to one.
If you have not got a trademark to protect your brand there is still the possibility of seeing if there has been a copyright infringement. The principle of website blocking for copyright infringement is a statutory remedy under S97A Copyright Designs and Patents Act 1988, but oddly enough until the Cartier decision in 2014 there was no equivalent for trademark infringement.
It is therefore likely that ISPs will now take the same approach for the trademark website blocking applications as they have for the copyright blocking applications – namely not bother to oppose them – particularly where a relatively new website is concerned.
If you have concerns that some of these things have already happened or you want advice about how best to avoid them/correct them, contact us.
drteam@herrington-carmichael.com 01276 686222
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