UK High Court Forces Big ISPs to Block Websites for Trade Mark Abuse

The High Court of Justice in London has today ruled on a case that concerned the abuse of commercial Trade Marks. Crucially the outcome means that several of the United Kingdom’s largest broadband ISPs (BT, Sky Broadband, Virgin Media, EE and TalkTalk) can now also be forced to block websites that abuse company trademarks / logos, such as by dealing in counterfeit goods.

The case, which involved the owner of luxury brands including Cartier and Mont Blanc (Compagnie Financière Richemont SA), first came to light last month (here) and at the time there were fears that an overzealous ruling might risk catching legal websites in its net, such as eBay or Amazon (these can sometimes unwittingly end up fostering the sale of counterfeit products).

In the end the High Court ruled that several such websites should face the same measures as those that foster Internet piracy and be blocked from view. The sites include Cartierloveonline, Hotcartierwatch, IWCwatchtop, Replicawatchesiwc, 1iwc, Montblancpensonlineuk and UKmontblancoutlet.

A Richemont Spokesperson said (TorrentFreak):

“We are pleased by this judgment and welcome the Court’s recognition that there is a public interest in preventing trade mark infringement, particularly where counterfeit goods are involved. The Courts had already granted orders requiring ISPs to block sites for infringement of copyright in relation to pirated content. This decision is a logical extension of that principle to trade marks.”

But the good news is that an intervention by the Open Rights Group has managed to extract a number of key concessions, which will limit the scope of future requests. For example, the court will have to be mindful of how these orders can impact on third parties. Any website can carry the logo for one company or another, often as part of a news article or product description, and thus overzealous enforcement would risk creating problems.

Mr Justice Arnold’s Decision:
* Accepted ORG’s submission that the orders should be required to have safeguards against abuse, and that this was a requirement which had been missed by the other parties (para. 191);
* Adopted ORG’s concrete proposals about the information to be included on landing pages and “sunset clauses” as safeguards against abuse (paras. 262 to 265); and
* Thanked ORG for its “brief, moderate and helpful” written submissions, which were “sensibly” not opposed by the other parties (para. 7).

Apparently Richemont already has tens of thousands of other domains in its sights for future blocking orders. Meanwhile those who go seeking such goods will have no trouble getting around the blocks, assuming anybody really wants to buy a fake that much?