Who do I call if my trade mark is being infringed?

In an era where competition in the luxury goods market is at its peak a trade mark is invaluable. Consequently, when company’s trade marks are being infringed it causes problems that go beyond lost revenue. The case of Cartier International AG v British Sky Broadcasting highlights this. Cartier (known under the company name Richemont) had brought a blocking injunction against five major internet service providers (ISPs) in the UK because counterfeit luxury goods were being sold on internet sites. The ISPs included Sky, BT, EE Limited, TalkTalk and Virgin Media. Although, there had been no wrongdoing on the part of the UK ISPs, the fact still was that they owned 95 percent of the market share meant that the courts could not just allow this counterfeit epidemic to continue.

The court highlighted that the sale of counterfeit goods damage Richemont in four ways:

1) Loss of sales.

2) Lowers the reputation of their goods.

3) Cheap replicas devalue those of the original.

4) It damages confidence of the consumer in the legitimate market.

The reason why the imposition of blocking injunctions by the High Court was appealed by the ISPs is because:

1) They were no guilty of wrongdoing

2) They had not infringed the trade marks or been engaged in a common design with the website operators offering counterfeit goods for sale.

3) They did not owe a duty of care to take responsible care to ensure that their services were not used by the website operators

Subsequently, the appellate court had to answer the question: Is there a principled basis for making blocking injunctions against IPSs, who were aware that their services were being used by third parties to infringe registered trade marks and other intellectual property rights?

The Court of Appeal answered in the affirmative. This case involved art. 11 of the European Parliament and Council directive 2004/48 on the enforcement of intellectual property rights. It had not been implemented into UK law. Since there was no specific UK statue that could be relied upon by Richemont, the court had to assess whether it had jurisdiction to bring the law into line with the European directives. The court decided that it had jurisdiction under s. 37 (1) of the Senior Courts Act 1981 (SCA1981). It was argued that this statue gave it the necessary legal jurisdiction to under ‘a purely domestic interpretation of s.37 (1) SCA 1981’. Even if it had not, then s.37 (1) could be construed consistently with the third sentence of art. 11 in according to the marleasing principle (all UK law should be construed in line with European law). Thus, the appellate court decided that although the ISPs were innocent, the economic consequences were too grave and Richemont (Cartier) needed a solution (blocking injunctions against the third parties using the IPS’s services to sell counterfeit goods).

By Fatima Amedu