A test case brought by the owners of luxury brands including Cartier, IWC and Mont-Blanc against five internet service providers (ISPs) Sky, BT, EE, TalkTalk and Virgin has resulted in website blocking orders against the ISPs where the websites in question were being used to sell counterfeit products. The sites included hotcartierwatch.com, replicawatchesiwc.com and ukmontblancoutlet.co.uk.
The power for the court to grant an injunction against an ISP where the ISP has knowledge of another person using their service to infringe copyright (including where they have been contacted and informed about the infringement) expressly exists in the Copyright, Designs and Patents Act 1988. This was added following a requirement for member states to create the power in the 2011 EU Copyright Directive. The law has been used to obtain blocking orders covering websites selling pirated content.
The 2014 EU IP Enforcement Directive required member states to extend that power to all intellectual property rights. The UK did not expressly do so, however, as the government believed that a separate general power to grant injunctions in all cases in which it appears to be just and convenient to do so covered the power adequately.
The court held that it had jurisdiction to grant the website blocking orders in respect of counterfeit product websites under the general domestic power but, even if that was incorrect, on the basis that the English legislation must be construed so far as possible to conform with the EU IP Enforcement Directive. Otherwise, the UK would be in breach of that directive.
There were, of course, further points for the brand owners to prove to obtain the injunctions. However, the extension of blocking orders to counterfeit websites has filled a hole in domestic legislation, opening the gates for trade mark owners to step up their fight to protect their brands.
Charles Hylton-Potts
