Are you launching a new business or releasing a new product? If your business or product is successful, you may be worried about it being copied. As the demand for your brand increases, so does the competition and possibility of counterfeit products associated with your brand. These days, it is easy to hide behind the Cloud, through fake accounts and various host and service providers. Therefore, you should know how to protect your brand and enforce your trade mark rights if online copycats target you. This article explains a recent decision in the United Kingdom (UK), shedding light on how you can protect yourself against counterfeits.

Australian Intellectual Property Law

Surprisingly, there is a specific provision in the Copyright Act 1968 that allows courts to make website blocking orders. For example, an Australian court has the power to grant an injunction (an order to stop another business from doing something) if:

  • a website provides access to an online location outside of Australia;
  • the website infringes, or facilitates infringement of, copyright; and
  • the primary purpose of the website is to infringe, or facilitate the infringement, of copyright (whether or not in Australia).

However, no such provision exists in the Trade Marks Act 1995, despite the Act having been amended in the 1990s. Why do courts deem copyright infringement as a serious offence to justify blocking websites, but not trade mark infringement?

UK Paves the Way

Similar to Australia, the UK has a specific provision under the Copyright, Designs and Patents Act 1988. This provision empowers a court to make an injunction against an internet service provider (ISP) to block websites where copyright has been infringed. However, yet again, there is no corresponding provision in their Trade Marks Act 1994 (UK).

However, in a UK case between the owners of the luxury brands, Cartier, Montblanc and Richemont, and five ISPs, the court granted an injunction. This injunction required the ISPs to block access to websites which infringed on the brand owners’ trade marks. There was no specific legal power for the court to award this injunction. Therefore, the court relied on their general powers to make the order.

Alternative Measures and Remedies

In deciding the UK case, the court considered whether website blocking orders would be the most appropriate action. It considered the detriment it would cause the ISPs and the other remedies available to the brands.

Obtaining an injunction against the ISPs to block an infringing website is not the only option to cease counterfeits. The other available measures and remedies include the following:

Initiate proceedings against the website operators This would involve bringing a claim against the website providers for trade mark infringement.
Seek an injunction against payment platforms An injunction against payment services, such as credit card providers or PayPal, could require them to block payments to infringing websites.
Lodge a complaint through the Domain Register In Australia, this would be by filing a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) or auDRP.
Report it to the hosting providers If the hosting provider becomes aware of illegal activity, they can issue a take down notice to the infringing website.
Lodge a notice with customs Owners of trade marks can file a notice of objection with Australian Customs, who will seize goods brought into Australia that feature the trade mark.
Report the infringing conduct to any associated third parties If the infringing parties are also selling their counterfeits through third party platforms like Amazon or eBay, report the conduct to the platforms directly. They are generally receptive to these sorts of complaints.

 

In the present case, the UK court determined that the alternative measures would not be sufficient to remedy the infringement. However, you can explore these options if you are concerned about counterfeits and trade mark infringement.

Impact of the UK Decision in Australia

The UK decision is telling. It illustrates that the general powers of the UK court to issue injunctions, and possibly other remedies, can extend to orders against ISPs in relation to trade mark infringement.

Specifically, the court enforced the brand owners’ rights despite the legislation not expressly saying so. This can be seen as a step in the right direction for Australia. However, the fact the UK has not responded to this case by updating their Trade Marks Act may suggest otherwise.

Key Takeaway

The Federal Court can make any order that it considers appropriate. But, is that enough to ward off against counterfeits and trade mark infringement? The importance of being able to enforce your trade mark rights is crucial to protecting your brand. Hopefully, the UK case paves the way for brand owners to protect and enforce their rights online.

However, rather than relying on the possibility of a court order, ensure you are proactive in protecting your brand. If you have any questions, contact LegalVision’s IP lawyers on 1300 544 755 or fill out the form on this page.

Alexandra Shaw
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