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Court of Appeal ruling 'provides extra ammunition' in fight against sale of counterfeit goods online, says expert

A new ruling by the Court of Appeal in London "provides extra ammunition" to brands in their fight against the sale of counterfeit goods online, an expert has said.07 Jul 2016

The Court of Appeal ruled that courts in England and Wales are free to impose injunctions on internet service providers (ISP) requiring them to block their customers' access to websites facilitating the sale of fake goods.

The Court of Appeal had considered an appeal by BT, Sky, EE, TalkTalk and Virgin against a 2014 ruling by the High Court which ordered them to apply technical measures to their services to impede customers' access to six websites identified as selling counterfeit Cartier watches and Montblanc pens. 

The High Court ruling served to expand the scope of UK intellectual property laws that film studiosmusic 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. There is no equivalent provision in the UK's Trade Mark Act, but in its 2014 ruling the High Court said that the court’s power to grant an injunction could be invoked against ISPs in relation to trade marks.

That finding was supported by the Court of Appeal, which ruled that it was justified to impose an injunction against the five ISPs in this case.

Lord Justice Kitchin said in the judgment that EU law provides "a principled basis for extending the practice of the court in relation to the grant of injunctions to encompass, where appropriate, the services of an intermediary, such as one of the ISPs, which have been used by a third party to infringe a registered trade mark".

Intellectual property law expert Iain Connor of Pinsent Masons, the law firm behind Out-Law.com, said: "The Court of Appeal has considered the High Court judge's extension of injunctions against ISPs in order to combat counterfeit goods and upheld his reasoning. This provides extra ammunition for rights holders against trade mark infringers and means websites selling counterfeit goods can be blocked so that UK consumers will not be ripped off."