ISPs have an obligation to try and block websites selling counterfeit goods
As a result of a ruling on 17 October 2014 Internet Service Providers (“ISPs”) were held to play an “essential role” in impeding the sale of counterfeit goods.
The case was brought by Compagnie Financière Richemont SA (“Richemont”), the parent company of a number of companies including Cartier, Van Cleef & Arpels and Montblanc, in relation to a number of luxury brands owned by the group. Richemont demanded that theUK’s top 5 ISPs block 6 websites which use fake versions of the group’s trademarks and sell counterfeit goods. Richemont has stated that the 6 websites were the first of over more than 200,000 potentially infringing websites.
The Judge found that exclusivity is an important aspect of the image of all the affected brands and the fact that the 6 websites all sold counterfeit products was damaging to Richemont’s sales and may have the effect of eroding the confidence of consumers in the legitimate market for the goods.
Unusually the case relied on trademark infringement rather than the usual line of attack in such cases – copyright infringement. In passing judgment the Court relied on the general jurisdiction of the court and the European directive on the enforcement of intellectual property rights which provides for injunctions against intermediaries whose services are used by third parties to infringe intellectual property rights.
The case is seen as a positive step for trademark owners seeking to protect their brands and also for consumers. Until the ruling ISPs had no connection with or responsibility for counterfeit content on websites. However is it up to the trademark owner to find and identify websites selling counterfeit goods and to pass this information on to the ISPs. ISPs do now face further legal challenges from other brand owners.
Brand owners affected by online sales of counterfeit goods will welcome this ruling as it offers a real opportunity to combat the sale of counterfeit goods thereby preserving the value of the genuine article.