A nervous disposition
Two recently reported cases have underscored the steps that can be taken by intellectual property rights holders to prevent the sale of counterfeit goods, both on the online marketplace and in traditional physical markets.
1. Blocking websites
On 6 July 2016 the Court of Appeal in Cartier International AG & others –v- British Sky Broadcasting Limited and others (2016) EWCA Civ 658, affirmed the earlier 2014 decision of Mr Justice Arnold granting the Claimant trademark owners injunctions against various Internet Service Providers (ISPs) requiring them to block their customers from accessing websites which offered goods which were being sold in infringement of the Claimant’s trademark rights. In 2003, Section 97A of the Copyright, Designs and Patents Act 1988 introduced a special provision giving the Court jurisdiction to grant blocking injunctions against ISPs in relation to websites which sold goods in infringement of copyright. Copyright owners have successfully used Section 97A over the years to press ISPs to remove or block websites selling goods in infringement of copyright, it being simpler for copyright owners to obtain blocking injunctions against readily identifiable ISPs than seeking injunctions against less identifiable websites often virtually untraceable or based out of the jurisdiction. Section 97A is concerned with copyright only and therefore no right to obtain a blocking injunction appeared to exist in relation to trademark infringement. The Court of Appeal confirmed that the Court has general powers, in appropriate circumstances, to make a blocking injunction against an ISP which hosts websites carrying goods in infringement of trademarks.
2. Injunctions against traditional market operators
Coincidentally, on 7 July 2016, in the case of Tommy Hilfiger (C-494/15), another trademark infringement claim, the Court of Justice of the European Union (CJEU) announced its Judgment (the full Judgment is not yet available) that the operator of a traditional marketplace may be forced to put a stop to the sale of counterfeit goods and other infringing actions committed by market traders, on its premises. The Court ruled that the market operator (in this case the Prague Market Hall), which let or sublet pitches in its marketplace, and which therefore may have allowed market traders to sell counterfeit goods on their sites, must be classified as an “intermediary” within the definition of the Enforcement Directive (2004/48/EC) and therefore the market operator can be forced to put an end to the infringement by market traders and take measures to prevent continuing infringement.
The CJEU stated that whether the sale took place on an online marketplace or in a traditional physical marketplace made no difference as the Enforcement Directive was not limited to electronic commerce.
These decisions will be welcomed by all intellectual property rights holders in their fight against the sale of false and counterfeit goods both online and in traditional marketplaces. The Courts have established that appropriate injunctions may be obtained in instances of copyright and trademark infringement and there is no reason to believe that other intellectual property rights, such as patents and design rights, may not be similarly protected.
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