infoTECH Feature

October 24, 2014

Landmark UK Test Case Rules ISPs Must Do More to Block Sites Selling Counterfeit Goods

When commerce started taking place on the Internet, it opened up a global marketplace in which virtually anyone was able to sell their goods online. This was a great opportunity for companies to increase their bottom line without having to invest in physical stores for consumers that wanted to purchase their products in countries around the world. But with minimal or no regulation governing Internet commerce, it also meant counterfeiters had the same access to the customers as legitimate companies.

The attempt by companies with intellectual property rights to stop these counterfeiters was not successful, and because the counterfeit products were being sold in countries limited or non-existent copyright protection, there was very little they could do. However, a new ruling by the High Court in the UK is about to change all that when it ruled ISPs have to put forth a concerted effort to block sites selling counterfeit goods.

According to the Guardian, this new landmark test case allows brand owners to persuade ISPs to start policing trademark infringement at scale in addition to copyright enforcement. Initially the case was brought to the courts by the Richemont/Cartier group to have BSkyB, BT (News - Alert), EE, TalkTalk, and VirginMedia block six websites selling fake versions of their brands.

The paper identified the six offending websites as cartierloveonline.com, iwcwatchtop.com, replicawatchesiwc.com, 1iwc.com, montblancpensonlineuk.com and montblancoutletonline.co.uk. But with Richemont identifying 239,000 potentially infringing sites, this is just the start of a long war legitimate companies will have to fight in order to protect their intellectual property globally.

The case was adjudicated by Justice Richard Arnold of the High Court of England and Wales, and he used the general jurisdiction of the court and the European directive on the enforcement of intellectual property rights to make his ruling, this according to the paper. With this directive, injunctions can be issued “against intermediaries whose services are used by a third party to infringe an intellectual property right.” In essence any ISP that is facilitating the sales of these counterfeit goods by allowing the website access can be stopped. The measures to stop this effort according to the ruling must be “effective, proportionate and dissuasive.”

“This case represents a positive step in the fight to protect brands and customers from the sale of counterfeit goods online,” said a spokesperson for Richemonte Cartier. “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. The Courts had already granted orders requiring ISPs to block sites for infringement of copyright in relation to pirated content. This decision is a logical extension of that principle to trademarks.”




Edited by Alisen Downey
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