Herbert Smith conference: Discussing the ‘landmark’ Cartier decision

Law firm Herbert Smith Freehills discussed domain name takedowns and online counterfeiting at an IP conference last week.

Speaking on Wednesday, January 25, Rosie Patterson, senior associate at the firm, referred to one recent case, Cartier v BSkyB and others.

In July last year, the English Court of Appeal handed down its decision in Cartier.

The CJEU upheld an earlier decision made by the English High Court in 2014, ruling that trademark owners may be granted site-blocking injunctions against internet service providers (ISPs) to prevent access to third-party websites that sold counterfeit goods.

In October 2014, TBO reported that Cartier had sued five UK ISPs, including TalkTalk, Virgin and EE. The defendants have a 95% share of UK broadband users.

Cartier sought injunctions against the defendants and asked them to block access to the websites, which sold and advertised counterfeit goods under the luxury brand’s trademarks.

The Cartier case was a “landmark” decision for brand owners, according to Patterson.

She added that as a result of this decision, trademark owners can look forward to receiving some sort of protection in these instances of infringement.

She said online counterfeiting costs “hundreds of billions of pounds a year”.

Online enforcement, she explained, is “difficult and costly” and when one infringing domain is taken down, a “whack-a-mole” scenario takes place where another domain pops up the next day.