UK High Court orders ISPs to block trademark-infringing sites

A landmark ruling has been handed down in the UK that establishes the right of trademark owners to secure court orders blocking websites that sell counterfeit products.

The case against several Internet service Providers (ISPs) - including BT, BskyB, EE, Talk Talk and Virgin Media - was filed last month by Richemont, which owns several of the world's leading luxury goods firms including Cartier, IWC and Montblanc.

Richemont's legal representative Wiggin LLP said the court concluded that ISPs play "an essential role" and that the court "can and should apply Article 11 of the Enforcement Directive to require the application of technical measures to impede infringement of trademarks."

The court considered the various enforcement measures that are available to trademark owners when tackling infringement online, said the legal firm in a statement.

Judge Richard Arnold said the case was one of the first of its kind and could serve as a test case to prompt other actions by brand owners in Europe.

Wiggin also brought the first successful action against ISPs - known as the Newzbin case - which made it possible to force them to block file-sharing sites encouraging downloading of copyrighted digital content.

As a result the UK now has a highly efficient process for copyright holders to get file-sharing sites shut down, and the latest judgment indicates that a similarly streamlined option will be available for rights holders affected by online trademark infringements.

The Newzbin case relied on a particular provision of the UK Copyright Designs & Patents Act that specifically implemented Article 8(3) of the EU Copyright Directive, according to Wiggins.

The ISPs resisted Richemont's action on the grounds that the equivalent provision in the Enforcement Directive was not specifically implemented into the Trade Marks Act, but this position was rejected by the court, although it did confirm that it is the rights holders' responsibility to accurately identify the IP addresses and URLs to be notified to the ISPs.

Richemont said in a statement that the judgment "represents a positive step in the fight to protect brands and customers from the sale of counterfeit goods online."

"The courts had already granted orders requiring ISPs to block sites for infringement of copyright in relation to pirated content," it added. "This decision is a logical extension of that principle to trademarks."

URLs cited in the case included examples such as hotcartierwatch.com, iwcwatchtop.com, replicawatchesiwc.com, 1iwc.com and montblancpensonlineuk.com.

The ISPs position was supported by digital freedom organisation Open Rights Group (ORG), which said it was "disappointed that the court decided it had jurisdiction to grant these blocking orders."

It added however that the court accepted its position that injunctions should be subject to certain safeguards to avoid abuse, including landing page information when sites are taken down and sunset clauses.

"We hope that this intervention will go some way to help ensure that future claimants cannot use blocking orders to restrict legitimate activity or free speech," said David Allen Green of ORG's legal counsel Preiskel & Co LLP.

The sale of counterfeit and pirated products could be worth as much as $960bn a year by 2015, according to a 2011 report by Frontier Economics cited in the ruling.