UK ISPs Lose Appeal Against Website Blocks for Trade Mark Abuse

Several big UK broadband ISPs, including BT, Sky Broadband, EE, TalkTalk and Virgin Media, have lost an appeal against a 2014 ruling by the High Court, which extended court ordered website blocking to include sites that sell counterfeit goods (i.e. abuse of Trade Mark).

At present ISPs can be forced, via a court order, to block websites if they are found to facilitate Internet copyright infringement (piracy) under Section 97A of the Copyright, Designs and Patents Act. But in 2014 this ruling was extended to include sites that sell counterfeit goods (here) and thus abuse company trademarks / logos.

Aside from the unlikely risk that this could be applied in an overzealous way (imagine eBay being blocked), the ISPs complained that Cartier and Montblanc (they raised the original case) had provided “no evidence” that their networks were being abused to infringe Trade Marks and that the UK Trade Mark Act does not include a provision for website blocking.

The ISPs also noted that such sites weren’t heavily used, unlike the major piracy havens that have already been restricted, and thus they felt as if it would not be proportionate for them to suffer the costs involved.

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.

As for the ISPs, they incur on-going costs as part of their work to introduce such blocks. For example, EE previously suggested that a “near four figure sum” was involved with each update, while Sky points to a “mid three figure sum” and then roughly half that for future updates. Similarly Virgin Media pegged their own annual costs at a “low five figure sum“.

Statement from Bristows LLP (London Law Firm):

“Today, the Court of Appeal has confirmed a High Court’s landmark 2014 decision against internet service providers, requiring them to block access to websites which sell counterfeit goods. The Court of Appeal also said that the costs of implementing such a blocking order should fall on the ISPs, rather than the rights holders who benefit from the order.

The decision will be seen as positive news by brand owners concerned with the difficulties of dealing with counterfeit goods selling websites, who are often based out of the jurisdiction and prove difficult to deal with. ISPs, though, will now have to bear the costs of implementing such blocking orders for trade mark owners, in the same way that they have borne the cost of implementing orders which block access to websites which host copyright infringing works.”

We can probably expect to see a lot more Trade Mark related blocks in the future.