UK court rules that websites selling fakes can be blocked

Internet service providers can now be ordered to block websites that sell counterfeit goods, a UK court has ruled.

The judgement by the UK Court of Appeal for England and Wales upheld an earlier High Court ruling.

It follows an appeal by five internet service providers (ISPs) – Sky, BT, EE, TalkTalk and Virgin – to orders made last year in November and December that required the ISPs to block or attempt to block access by their customers to certain websites that advertised and sold counterfeit copies of a brand owner's goods.

"This case is about using technology to stop the activities of unlawful websites," said Simon Baggs, partner at law firm Wiggin IP Partner, who defended the brand owners.

"The court has recognised that often the best way for online unlawful activity to be stopped is for the intermediaries such as ISPs to cut the Internet lifeblood that the websites need to trade. Site blocking is a developing area in many jurisdictions globally and this judgement should further enable the growth of this important remedy," he said.

The initial case was brought in April 2014 when the luxury brand owner Richemont, which owns a number of UK registered trademarks for certain brands including Cartier, claimed that operators of certain websites were infringing the registered trademarks and were using the services of the ISPs to do this. Orders were granted to block access to the websites.

But appealing last year's orders, the ISPs claimed they were wholly innocent parties and were not alleged to be wrongdoers, and that the court had no jurisdiction to make such an order.

The Court of Appeal disagreed and upheld the High Court ruling granting orders to block access to certain websites accused of infringing trademarks. The ISPs must also bear the costs for implementing the order.

The court concluded that the activities of websites selling counterfeit goods caused significant damage to brands and that the blocking of such sites would probably be highly effective.

This case is believed to be the first case where a company has demanded sites be blocked over the use of trademarks rather than copyright infringement.

Elaine O'Hare, senior associate at law firm Stevens & Bolton, said the decision was good news for brand owners. It meant such companies could win website blocking injunctions against the ISP hosting the site rather than pursuing the website operator, which could be difficult to identify or based in another jurisdiction.

"It is bound to encourage similar cases, which may help to curtail the booming market for counterfeit goods, but is likely to place a cost and time burden on the ISPs against whom orders are made," she said.

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