In what is thought to be the first ruling of its kind, the High Court in the UK has issued that the main five UK internet service providers, BSkyB, BT, EE, TalkTalk, and VirginMedia, block access to six websites sporting fake versions of Richemont's brands and selling counterfeit goods that are under its trade marks.
The landmark case has now opened the gates for brand owners to compel ISPs to police trade mark infringement in similar way to how they enforce copyright-infringing websites. However, the ruling did state that it was up to the trade mark holder to find and identify IP addresses selling counterfeit goods and then pass this information on to the ISPs.
High Court rules in favour of Richemont and instructs ISPs to block counterfeit sites
The case, decided in the High Court of England & Wales by The Honourable Mr Justice Arnold, ruled in favour of Richemont after he decided that the sale of counterfeit goods was damaging to trade mark owners like Richemont in at least four ways: “First, they may lose sales. Where goods are advertised as replicas and sold at a fraction of the price charged for the genuine articles, then it is unlikely that consumers will be deceived and hence that the trade mark owner will have lost a sale at that point...Secondly, counterfeit goods are almost always of lower quality than the genuine articles.
“Thirdly, where the genuine articles were luxury goods with a cachet that depends in part upon their expense, and hence exclusivity, this is eroded by the availability of cheaper replicas. Fourthly, the availability of counterfeit goods may have the effect of damaging the confidence of some consumers in the legitimate market for such goods.”
A spokesperson for Richemont told The Guardian: “This case represents a positive step in the fight to protect brands and customers from the sale of counterfeit goods online. We are pleased by this judgment and welcome the Court’s recognition that there is a public interest in preventing trade mark infringement, particularly where counterfeit goods are involved.
“The Courts had already granted orders requiring ISPs to block sites for infringement of copyright in relation to pirated content. This decision is a logical extension of that principle to trade marks.”