In the world of counterfeits, the internet is often a massive game of “WHACK-A-MOLE”. Hit one website and another pops up – quite often the same one on a different server and/or under a different domain.
If you are chasing this then one option is to move from attacking the supply of internet services to the infringer to attacking the supply of internet services to the consumers. If consumers cannot access the sites then that removes the issue. It is not an entirely new strategy for copyright infringement – for some time the English Football Association has been seeking orders from the Courts that the UK internet providers should block access to infringing sites.
The UK courts extended this, however, in the recent Cartier case – the Court held that it had the right to make similar orders in the case of trade mark infringement, and that the cost of implementing the orders was to be borne by the internet service providers (ISPs). This was important for two reasons:
- In the case of copyright, these orders had been obtained based upon provisions of the copyright legislation introduced to bring European law into effect – there was no corresponding provision in trade mark law. The Court found that its general jurisdiction, or alternatively implementation of the enforcement directive, gave it the power notwithstanding that trade mark law did not give the right.
- The ISPs argued that there was a cost to implementing the orders and any subsequent changes to the orders (such as when a site moves and the block has to extend to cover the additional site). The ISPs believed that the brand owner should bear this cost. The Court rejected this, much to the concern of the ISPs.
These conclusions have been confirmed by the Court of Appeal, and it therefore seems unlikely that they will be overturned in the near future. By indicating that the right to make the order comes from the general jurisdiction of the Court, the Court of Appeal also made the decision “BREXIT-proof”, in that it does not rely upon the Court having to aply European law.
Time will tell whether this leads to further innovative orders from the Court – as technology increases, it is inevitable that the Courts will be asked to assist brand owners to fight infringements effectively and innovatively.
If you would like to discuss this decision or any infringement issues you have then please get in touch!