Internet service providers must help crack down on fake goods, high court rules

A landmark British test case has opened the gates for brand owners to compel internet service providers (ISPs) to police trademark infringement at scale, in addition to their already controversial role in copyright enforcement.

The case was brought by luxury brands in the Richemont/Cartier group, demanding that the UK’s five major ISPs – BSkyB, BT, EE, TalkTalk, and VirginMedia – block six websites sporting fake versions of their brands and selling counterfeit goods.

Richemont stated that these were the first in a line-up of 239,000 potentially infringing sites.

Global first

The case, decided in the High Court of England & Wales on Friday by Justice Richard Arnold, extends the remedy of ‘blocking injunctions’ - a favoured weapon of copyright enforcers - to trademarks for the first time.

Unlike copyright, trademark law does not expressly provide for the issuing of blocking injunctions. To negotiate this jurisdictional hurdle, the judge relied on the general jurisdiction of the court and the European directive on the enforcement of intellectual property rights.

The directive provides for injunctions “against intermediaries whose services are used by a third party to infringe an intellectual property right”. It also provides that such measures must be “effective, proportionate and dissuasive”.

The six obscure websites at the centre of the case were not indexed, not searchable, and there was no proof of their access and use in the UK other than their names. They are cartierloveonline.com, iwcwatchtop.com, replicawatchesiwc.com, 1iwc.com, montblancpensonlineuk.com and montblancoutletonline.co.uk. There is no indication if the ruling will help prevent new, replica sites committing similar trademark infringement.

“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 trade marks.”

Burdens and safeguards

The ruling is unusual in that apart from providing an internet connection to consumers, ISPs otherwise have no connection or responsibility for counterfeit content.

Controversially, the decision leaves ISPs responsible for all costs. Though the costs of blocking one website are minor, the attractiveness of this remedy to rightholders means that this is likely to have significant cumulative effect, placing a large burden on businesses that already suffer the heat of overzealous copyright enforcers and surveillance hoarders.

Another contentious aspect of the decision is that the judge relied on the fact that ISPs had already innovated, under political pressure, to block child abuse images and institute parental controls, so had the infrastructure necessary to block counterfeit websites.

The campaign organisation Open Rights Group made a successful intervention in the case to secure some modest safeguards, with the judge requiring that such orders be subject to sunset clauses of a provisional two years, as well as including adequate notifications on blocked sites.

The Internet Service Providers Association has been contacted for comment.