The Court of Appeal confirmed on 6 July 2016 in Cartier v BSkyB that internet service providers or ISPs such as BT, Sky or Virgin Media can be ordered to block access to websites selling trade mark infringing goods.
This is an important development as until recently a fashion brand could not compel an ISP to permanently block a website selling goods that infringe a trade mark, the brand was instead forced to monitor the website and submit notice and take down requests. This was a time consuming and costly procedure: often by the time the site was taken down or the item removed the damage had been done.
The court recognised that even if ISPs are not guilty of any wrongdoing and not themselves infringing the trade marks, the websites need the services of the ISP to host the site and to sell the infringing goods. It follows that ISPs are part and parcel of those infringing activities.
This is a welcome decision for fashion brands as it will make it easier to prevent:
- the sale of goods that are obvious trade mark infringements; and
- infringements on multiple websites that are hosted by the same ISP.
Following this decision, applications for this type of blocking injunction are likely to be more common and much easier to obtain and can be very cost effective compared to the level of infringement sustained.
This decision was based on EU laws that have been implemented in the UK. But who knows what will happen to these laws post Brexit?
In short it is another weapon in the anti-counterfeiting armoury.