It’s confirmed and official. If you’re an internet service provider (think Sky, Virgin, BT), the court can force you to block (or attempt to block) access by your customers to online sites selling counterfeit goods.
If you don’t, there will be costly consequences.
Everything seems to revolve around the internet these days and in the UK we have several internet service providers. The biggest of these retail internet service providers are Sky, BT, TalkTalk, EE and Virgin Media. Between them they share approximately 95% of the market.
In 2014, the owners of registered UK trade marks, including the well-known luxury goods brands Cartier and Montblanc, started a legal action against these 5 ISP’s. They argued that certain websites that were hosted by these providers were infringing their intellectual property rights. These unscrupulous websites were advertising and selling counterfeit goods that were masquerading as the real thing and using the ISP’s services in the process.
The UK’s high court ordered these 5 ISP companies to block or to attempt to block access by their customers to these websites.
The ISP’s appealed the decision on technical grounds including challenging whether it was appropriate to use a website blocking court order in the context of a registered trade mark infringement.
And so the case came before the UK’s Court of Appeal.
In its’ ruling on Wednesday, the Court of Appeal confirmed the original 2014 ruling. It ordered the ISP’s to pay not only the costs of the necessary steps they need to take to implement the website blocking orders that had been imposed on them by the High Court in the previous court hearing, but also the legal costs incurred by the owners of the trade marks.
This ruling is good news for brand owners and genuine retailers, who regularly face the threat of these free-riding and counterfeiting sites. It’s also reassuring for members of the public who regularly shop online and who are entitled to have the protection of the law when it comes to knowing what they are buying and being able to trust in the integrity of the source from which they buy (as well as the internet service provider with whom they’re signed up).
If you want to find out more on Intellectual Property rights, including trade marks, take a look here at our free guide. It’s packed full of helpful case studies, infographics, checklists and helpful tips for how to keep the protection and management of your creative rights simple, cost-effective and easy.
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Suffice to say that in April 2016 the case went to the Court of Appeal (London) and today the court moved to uphold the original 2014 ruling, which means that ISPs will have to continue blocking such websites and must also stomach the ever rising costs involved. Not forgetting that Rights Holders also have to spend thousands of pounds just to get even one site blocked.