As many will be aware, take down notices (in which a rights holder can alert an on-line host that a website hosted by them is carrying unauthorised content) are available. In many countries, in order not to become liable themselves, the host needs to have a take down procedure in place so that once notified of the existence of infringing content on the offending website, the offending website is taken down until such time as the offending content is removed.
Such processes typically benefit copyright owners rather than trade mark owners. Also, it can be difficult in certain cases to locate the host of an offending web site. Alternatively, where the host can be found it might not be located in a jurisdiction in which such take down procedures may readily be enforced.
Against this background, a new weapon in the arsenal of trade mark owners is now available in the UK. It should make taking action against such websites more effective, especially where the website (or the host server) is operated from outside the UK.
This tool comes in the form of a blocking order obtained through the UK courts. This should prove particularly effective in dealing with counterfeiters offering fake goods on websites based outside the UK to consumers accessing websites from within the UK by way of UK Internet Service Providers (ISPs).
In short, the order requires named UK ISPs to block access to the problem website when a user seeks to access it through a browser. The precise mechanism as to how the website is blocked is left to the ISP, for example IP address blocking or the adoption of a filtering mechanism. It is intended that the blocking mechanism should prevent the use of the same IP address under a different domain name.
While a court action does need to be brought, it is the normal practice of the ISPs not to resist such an action. This significantly reduces the costs to an applicant seeking such an order. The costs of an unopposed order typically work out at around £14,000 per website.
Until recently such remedies were only available for copyright owners where copyrighted content was being made available (by way of streaming or download) to users accessing the sites through a UK ISP. A recent case now confirms that this remedy is now available to trade mark owners having registered trade mark rights in the UK in cases where the trade mark is being mis-used to sell non approved goods over the Internet.
In relation to copyright infringements, this mechanism has proven somewhat effective. In particular, the 5 UK ISPs usually named in such orders have 95% of the UK broadband market. Research indicates that in the UK between January 2013 and May 2014, such blocking led to a reduction in traffic of just over 70% to the blocked websites. It is anticipated that such blocking orders will prove equally effective in restricting access to websites offering fake goods to the UK shopper.
Should you wish further information, or have concerns regarding potentially infringing on-line content, please consult your usual Pure Ideas contact.