For some time now, owners of copyright in films and music have been able to ask the court to order internet service providers (‘ISPs’) to prevent access to websites which make available unauthorised copies of their material. A recent judgment means that trade mark owners can now do the same.
The case was brought by Richemont, the owners of, amongst other things, the Cartier and Mont Blanc brands. They were asking the court to require the UK’s main ISPs, which together account for 95% of the UK’s broadband providers, to block or limit access to seven websites which advertised and sold counterfeit goods in the form of replicas.
Richemont were successful for a number of reasons but the 266-page judgment contained useful guidance on some important factors which swung it their way:
(1) alternatives to injunctions like the one Richemont were requesting, such as contacting the website operators and payment freezing methods, rarely proved fruitful (in the case of the former mainly because the operators are based overseas);
(2) blocking sites had proved to be effective in relation to copyright claims and there was no reason to think that wouldn’t be the case in relation to trade marks;
(3) the cost of implementing blocking procedures was not in itself enough to say that the injunction shouldn’t be granted;
(4) the injunction would be ‘dissuasive’ as not only would it block users from attempting to access the site but the reason for the block would also have to be explained to users on the page that appeared on their screens;
(5) the blocking could be targeted to limit the effect on lawful users of the ISPs services; and
(6) the injunction had safeguards built into it – users can apply to the court to end the order as it relates to them; information about why the site is blocked would have to be displayed too; and the injunction would automatically fall away after a set period of time.
This injunction will, we suspect, be the first of many.
Commercial Dispute Resolution
0113 227 9318