Update: Cartier anti-counterfeit lawsuit targets trademarks, ISPs

Luxury goods maker Cartier International has continued its campaign against online counterfeit sales with a wide-ranging lawsuit citing a number of large Internet Service Providers (ISPs).

The complaint is trying to force ISPs to close down websites that are infringing Cartier's trademarks by using its logos and offering counterfeit copies of its luxury watch and jewellery products for sale. It names the UK's largest ISPs, namely BT, BskyB, EE, Talk Talk and Virgin Media.

Unlike earlier actions, the new case is specifically targeting trademark rather than copyright infringements, which has raised concerns at free expression and privacy organisation Open Rights Group (ORG).

"Whilst ORG takes no view on the merits of the trademark claims in the current case, we believe the outcome of this case will have implications for future trademark blocking applications, which could potentially threaten the legitimate interests of third parties," said the group in a statement.

ORG is concerned that if the claimants are successful, the ruling could be used as a basis for applications for blocking orders that are contrary to the public interest - for example, if the judgment was used to try and block websites that use trademarks to legitimately criticise or parody well-known brands.

The case could also affect commercial third parties who have no involvement in any alleged infringement - for example law abiding businesses whose products appear on websites alongside those of companies involved in infringing activity.

"The question before the Court is whether the owner of a trade mark can obtain an injunction - not against an alleged counterfeiter, or even against the owners and operators of the websites on which counterfeiters sell their items," says David Allen Green, a lawyer at Preiskel & Co LLP representing ORG.

"The Court is instead being asked to grant an injunction against the ISPs, so that websites alleged to be infringing the trademarks are blocked to ISP subscribers."

This is not the first time Cartier has tried to take a combative stance against organisations that it feels are well positioned to take an active role in the fight against the online sale of counterfeit goods.

Earlier this year, the company filed a lawsuit against UK domain name registrar Nominet seeking an order requiring it to automatically suspend web addresses based on a private company's belief that the associated websites infringe its intellectual property (IP).

Commenting on the latest case, Cartier parent Richemont said the action is about "protecting Richemont’s Maisons and its customers from the sale of counterfeit goods online through the most efficient means", insisting it is not about "restricting freedom of speech or legitimate activity."

"When assessing a site for blocking, the court will consider whether the order is proportionate - ISP blocking will therefore only be used to prevent trade mark infringement where the court is satisfied that it is appropriate to do so," it added.

"Orders will not be made in respect of established marketplaces or websites where only a few sellers are responsible for counterfeit goods."

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