Ecommerce is delivering great results for everyone, including the bad guys. As a result, counterfeits sold online cost brand owners millions of pounds every year.
The notice and take down procedures offered by the reputable online market places like eBay’s VeRo initiative [its verified rights owner programme designed to protect rights owners, such as brands and retailers] provide a way to have offending items de-listed, but what can you do when the website isn’t reputable?
Extending copyright law to protect brands
The music and film industries soon learnt that notice and take down procedures on websites that allowed content to be shared freely could only get limited results. When legal action was started, websites such as the Pirate Bay moved offshore to jurisdictions beyond the reach of the UK courts. Help arrived in 2003 with the introduction of an amendment to the Copyright, Designs & Patents Act which allowed the rights holders to get an injunction against the ISPs which blocked access to the website at source.
Stop the problem at source
The UK’s five main retail internet service providers, (ISPs), Sky, BT, EE, TalkTalk and Virgin, cover 95% of UK broadband users and so an injunction against these ISPs blocking access to a website selling counterfeit products pretty much solves the problem. However, the 2003 law was written to protect the owners of copyright, not brand owners with registered trade marks.
Richemont changes the law
Richemont, the owner of brands such as Cartier and Montblanc, decided to take a chance and made an application to the court to force the ISPs to block websites that sold counterfeit goods that infringed its trade marks. The great news for brand owners is that the court agreed and said there was no reason why the law designed to stop file sharing in breach of copyright should not apply to stop people selling counterfeits.
What does this mean for you?
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. 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 such as domain name dispute procedures, customs or trading standards actions and/or traditional court proceedings.
The real benefit is that an ISP blocking injunction cuts the supply of counterfeits goods off at source without the need to chase the infringer through the courts around the world.