In what gives brand owners the power to combat trademark infringement in the EU, UK internet service providers were defeated as London’s High Court on Friday (17 October) handed down a landmark judgment establishing that trade mark owners can secure court orders blocking websites that are structured to infringe their trade mark rights by selling counterfeit goods online.
Justice Richard Arnold held that the UK’s five major internet service providers comprising Sky, BT, EE, TalkTalk and Virgin (collectively the ISPs) should block or at least impede access by their respective subscribers to six websites, dubbed the ‘Target Websites’ which advertise and sell counterfeit goods.
The battle saw the ISPs represented by Reed Smith partner Michael Skrein who instructed 8 New Square duo Charlotte May QC and Jaani Riordan. IP boutique Wiggin, meanwhile, represented the claimant, Switzerland-based luxury goods holding company Richemont, which owns Cartier, MontBlanc and Chloé, with Wiggin’s head of IP/rights protection team Simon Baggs leading a team and instructing 8 New Square’s Adrian Speck QC and 11 South Square’s Benet Brandreth.
The court concluded that there is a clear public interest in preventing the sale of counterfeit goods online and Richemont have a ‘legitimate interest in curtailing such activity’ and such orders by the claimants ‘would not interfere with the provision by the ISPs of their services to their customers’.
It is the first time an application for a website-blocking order against internet service providers in order to combat trade mark infringement has been made in the EU. This test case is likely to be followed by other applications by Richemont and other trade mark owners, both here and in other countries.
David Allen Green, Of Counsel and head of the litigation and media practices at Preiskel & Co, and who acted on behalf of Open Rights Group (ORG) which made written submissions to the court focusing on the position of third parties potentially affected by the orders sought by Richemont, said: ‘ORG is not on the side of counterfeiters. But innocent internet users can end up being affected by these orders. The court should be mindful of how these orders can impact on third parties. We are grateful to the High Court for recognising that the test to be applied by the court includes the requirement of there being safeguards against abuse. 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.’