ISPs Ordered to Block Websites Selling Counterfeit Products
In a landmark decision, a judge of the High Court of Justice, England and Wales has ruled that internet service providers (ISPs) in the United Kingdom may be ordered to take all reasonable steps to prevent or restrict access to websites selling counterfeit goods.
The case was brought by luxury brand owner Compagnie Financiere Richemont SA (Richemont), which relevantly owns the Cartier and Montblanc brands and associated trade marks, against the five largest ISPs in the United Kingdom.
Richemont sought orders requiring the ISPs to block access to websites selling counterfeit goods bearing its trade marks, such as www.hotcartierwatch.com and www.montblancoutletonline.co.uk. While similar orders had been made in copyright infringement cases in the United Kingdom (for example, requiring ISPs to block access to BitTorrent websites), this decision marks the first time that UK law has been used to block access to websites promoting counterfeit goods which infringe trade marks.
The ISPs argued that Richemont should have taken action against the infringing websites directly, and that the cost of implementing orders to block websites was an unjust burden on their businesses, which did not themselves participate in the infringement of the trade marks. The Court rejected these arguments, ruling instead that the orders were necessary, likely to be effective, and struck a proportionate and fair balance between the rights of the parties under the law of the United Kingdom.
This case is of particular interest to trade mark owners, as it represents an emerging area of law that can be used to combat counterfeiting and trade mark infringement in the murky waters of online shopping. For UK-based ISPs, it may signal the beginning of a significant increase in actions to block websites.
There has been no decision of a similar nature in Australia to date. In fact, film companies were unsuccessful in an action in the High Court of Australia which sought to force ISPs to block torrents in the iiNet decision . An extension of the Richemont decision into Australia would be a further development in the law and would provide further protection for brand owners online.