Luxury Goods Maker Wants ISPs to Block Websites for Trade Mark Abuse

Broadband ISPs in the United Kingdom could soon be forced to block websites that abuse commercial Trade Marks, assuming the owner of luxury brands including Cartier and Mont Blanc (Compagnie Financière Richemont SA) gets their way in a new court case, which Internet providers and the Open Rights Groups (ORG) are fighting.

Until recently Rights Holders have tended to focus their court ordered injunctions against websites that facilitate Internet copyright infringement (piracy), such as P2P (BitTorrent) indexes like The Pirate Bay. The court orders are usually served on the country’s largest ISPs (e.g. BT, Sky Broadband, Virgin Media and TalkTalk), forcing them to filter out access to related websites and any directly associated Proxy Servers.

At least that was the case until Compagnie Financière Richemont SA began contacting ISPs with a request that the censorship measures be extended to websites that abuse their logos (Trade Marks), such those that allow the selling of potentially counterfeit goods. But ISPs questioned the legality of this approach and the case has now reached the courts.

Indeed it’s easy to see how websites like eBay, perhaps even Amazon on occasion, might end up running afoul of such case law if applied too aggressively. Indeed at some point every website can carry the logo for one company or another, often as part of a news article or product description, and thus an overzealous approach to enforcement could risk creating bigger problems.

David Allen Green, Open Rights Group, said:

“The claimants in this case are Cartier and two related companies. They say the High Court does have this jurisdiction, under either the Senior Courts Act or the EC’s Enforcement Directive (or both). The defendants in the case – BSkyB and the other main ISPs – deny that there is any such jurisdiction. The case starts today before Mr Justice Arnold, the experienced Chancery judge who has already decided a number of cases involving the enforcement of IPRs on the internet.

Nobody sensible wants to give comfort or support to counterfeiters. But it is not difficult to see the problems which such injunctions may cause to other people using the internet. For example, a whole website could be blocked just because of the activities of a few sellers. Or a rights holder may threaten to apply for an injunction on the pretext of an alleged infringement when all that is happening is unwelcome consumer criticism or parody. There is also a matter of principle: such injunctions should never be a first resort of a lazy rights holder but the limited last resort of a rights holder who has genuinely tried other available means. And then there is the simple issue of effectiveness: injunctions should not be granted in vain and, as the websites will still exist, the orders of the Court can be still be circumvented.

Mr Justice Arnold has kindly given permission for the Open Rights Group (ORG) to make written submissions on whether the Court has the jurisdiction to grant such injunctions and, if so, how the legitimate rights of third parties should be protected.”

The first hearings for the test case began yesterday and we will be keeping a close eye on this to see whether or not ISPs will soon face a flood of similar requests. The Open Rights Group will seek to ensure, through their limited intervention, that the court does not issue a ruling that could have a chilling effect on free speech or legitimate businesses.