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Out-Law Analysis 2 min. read

Website blocking orders should be part of retailers' brand protection strategy, says expert

FOCUS: Retailers can avoid chasing sellers of fake goods around the courts in different countries by applying for a court injunction that can inhibit their ability to market online the counterfeits to consumers in the UK.

Website blocking orders provide a useful tool for controlling the sale of unauthorised goods and should be part of every company's brand protection strategy. 

Counterfeits sold online cost brand owners millions of pounds every year. Reputable online market places follow 'notice and takedown' procedures that mean they will take steps to de-list products from their sales platforms when brand owners inform them that they are being used to trade fake goods. However, brand owners can find that some websites trading counterfeit goods are not reputable and do not respond to notice and takedown requests.

Last year the High Court in London confirmed that trade mark owners can win website blocking orders against internet service providers (ISPs) requiring those ISPs to block their customers' access to websites that sell counterfeit products.

That ruling served to expand the scope of UK intellectual property laws that film studios, music labels and football authorities have used to stop internet users from accessing websites that make copyright infringing material available.

Under section 97A of the Copyright, Designs and Patents Act, the UK courts have the power to grant an injunction against an ISP if it has 'actual knowledge' that someone had used its service to infringe copyright. In a case involving designer jeweller Cartier, Mr Justice Arnold said that brand owners can also ask the courts to impose such an injunction against ISPs where website operators are infringing their trade mark rights despite the fact that there is no equivalent provision in the UK's Trade Mark Act.

The ability to obtain website blocking orders is a useful tool to combat operators of websites that infringe IP rights to move their operations overseas to jurisdictions beyond the reach of the UK courts, such as what happened in the Pirate Bay case.

Now retail brands know they can stop counterfeiters at source by seeking an injunction against the five main UK retail ISPs, BT, Sky, EE, TalkTalk and Virgin. Those companies account for about 95% of the UK broadband market so an injunction against these ISPs blocking access to a website selling counterfeit products can go a long way to solving the problem of fake goods sites.

Brand-owners will need to decide on a case by case basis whether this is the right thing to do as there may be other routes that can be pursued before launching proceedings against the ISPs. Alternative options they could explore include initiating domain name dispute procedures, customs or trading standards actions and/or tradition court proceedings. 

However, website blocking orders are a new weapon against online trade mark infringements and their real benefit is that retailers can apply for them to cut the supply of counterfeits goods off at source without the need to chase the infringer through the courts around the world.

Iain Connor is an intellectual property law expert at Pinsent Masons, the law firm behind Out-Law.com. A version of this story was first published by fashion and retail news outlet Drapers.

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