Landmark case for brands in counterfeiting

October 17, 2014

The High Court in London has today delivered a landmark judgment establishing that trade mark owners can secure court orders blocking websites that are structured to infringe their trade mark rights by selling counterfeit goods online. Wiggin represented Richemont, the successful Claimants (whose Maisons include Cartier, MontBlanc and IWC).

The market for genuine products and services is seriously undermined by those who set up websites anonymously and then supply counterfeit goods and fraudulent services to the public in the UK and the rest of Europe using well known trade marks. In a comprehensive judgment, the court has considered the enforcement methods that are presently available to trade mark owners when tackling infringement online. The court has concluded that Internet Service Providers play “an essential role” and that the court can and should apply Article 11 of the Enforcement Directive to require the application of technical measures to impede infringement of trade marks.

The benefit however accrues not only to Richemont and other trade mark owners but also to consumers in the UK and the EU. The Court has carefully weighed all the factors in making its decision and has concluded that there is a clear public interest in preventing the sale of counterfeit goods online. We expect this decision to have an impact well beyond the UK.

Wiggin brought the first case to establish that ISPs could be required to impede infringement by copyright infringing websites (the Newzbin case). This action relied on a particular provision of the UK Copyright Designs & Patents Act that specifically implemented Article 8(3) of the EU Copyright Directive.

In the trade mark context, the equivalent provision in the Enforcement Directive was not specifically implemented into the Trade Marks Act. This led the Defendants to contend that the court did not have jurisdiction to make an order in favour of trade mark owners. The judgment rejects this contention and holds that Section 37 of the Senior Courts Act gives the court the power to make an order in accordance with Article 11 of the Enforcement Directive.

Since the Newzbin case, Wiggin has represented rights owners in applications for orders directed at impeding infringement by 47 websites that infringe copyright.

As today’s judgment reiterates, when orders are obtained, “it is the rightholders’ responsibility to accurately identify the IP addresses and URLs to be notified to the ISPs“. To assist clients in discharging this duty, Wiggin has established a separate company (Incopro Ltd) that provides “a system called BlockWatch, which continuously monitors the IP addresses and domains for the targeted websites on an hourly basis and on an automated basis“. Incopro also provides technical support in the preparation of evidence for such applications. We are delighted that Incopro’s systems have proved so important in supporting Richemont’s case.

The judgment also provides welcome analysis on whether site blocking works. Helen Saunders of Incopro gave expert evidence using data collated by Incopro in respect of over 10,000 websites. These include the websites that have so far been the target of blocking orders and in particular sites that stream film content. The judge assessed Ms Saunders’ evidence and noted that it showed that orders directed at streaming websites in the UK “have resulted in a decrease in the overall level of infringement in this sector in the UK“.

Wiggin instructed Adrian Speck QC and Benet Brandreth

Reed Smith instructed Charlotte May QC and Jaani Riordan