Counterfeits are fakes: goods carrying someone else's trademark that the owner never made or approved. Grey goods are the opposite problem: genuine products brought into the UK and sold without the trademark owner's consent. Both can be trademark infringement, and the UK courts have built up a useful set of counterfeit trademark cases on blocking websites, chasing sellers and stopping imports. These are the decisions I think every brand owner can learn from, and what they mean in practice before you send, or receive, a cease and desist letter.
What are counterfeit and grey goods?
In simple terms, there are three kinds of problem:
- Counterfeits. Fake goods bearing your name, logo or tagline. Selling them in the UK is usually a clear case of infringement.
- Lookalikes and replicas. Goods that aren't exact fakes but copy the look of a famous product, or carry its marks on unofficial versions.
- Grey goods. Genuine products, often bought abroad, imported and resold in the UK without the trademark owner's consent. "Genuine" doesn't automatically mean "allowed".
The remedies range from a letter to court orders blocking websites, and in serious cases, orders allowing a search of the seller's premises.
Can you get counterfeit websites blocked?
Cartier v Sky
The High Court ruled that UK courts can order the major internet service providers (ISPs, the companies that connect customers to the internet) to block access to websites selling counterfeit luxury goods. This extended a remedy that had until then been used for copyright. Courts can order blocking, but they build in safeguards such as time limits.
Read our summaryCartier v Sky
The Court of Appeal confirmed that ISPs can be ordered to block websites selling counterfeit goods, even though the ISPs did nothing wrong themselves. Blocking orders are available for trademark infringement, not just copyright.
Read our summaryCartier v BT
The Supreme Court ruled that trademark owners have to reimburse ISPs, as innocent intermediaries, for the reasonable costs of carrying out website-blocking orders. If you want counterfeit sites blocked, expect to pay the ISPs' compliance costs yourself.
Read our summaryNovo Nordisk v BT
Novo Nordisk secured a blocking order against four websites selling counterfeit and unlicensed weight-loss and diabetes medicines bearing its trademarks. A trademark case can also lean on other laws, here medicines regulation, to get a stronger remedy.
Read our summaryMarketplaces and unofficial merchandise
L'Oréal v eBay
Individual eBay sellers infringed L'Oréal's trademarks, but eBay Europe itself was not jointly liable. The court referred several unresolved EU law questions to the European Court of Justice. Running a marketplace that benefits from infringing listings doesn't automatically make the marketplace liable.
Summary coming soonThe Arsenal merchandise case
A street trader selling unofficial football merchandise bearing Arsenal's trademarks infringed those marks, even though fans saw the items as badges of support rather than as coming from the club. Using someone else's name or logo on goods can infringe even if buyers know it's unofficial.
Read our summaryLookalikes, replicas and copies
Red Bull v Big Horn
A company and its director infringed Red Bull's trademarks by selling Big Horn energy drinks with ram logos closely mimicking Red Bull's famous bull devices, unfairly riding on Red Bull's reputation. Copying the look and feel of a famous brand can be infringement even without proof that customers were actually confused.
Read our summaryBMW v Round and Metal
BMW successfully sued an importer of replica alloy wheels for infringing its registered designs and trademarks. The court ruled that the EU spare parts defence covered genuine repairs, not wheels sold mainly as cosmetic upgrades. A repair defence won't stretch to a style upgrade using someone else's design.
Summary coming soonWhitby Specialist Vehicles v Yorkshire Specialist Vehicles
Three individuals who physically copied a rival's ice cream van design and trademark were all found liable, including one who denied any involvement. Funding or helping with copying can make you personally liable.
Read our summaryGrey goods and goods in transit
Mastercigars v Hunters & Frankau
A UK importer bought genuine cigars from official outlets abroad and resold them in the UK. It infringed the trademarks because it could not prove the trademark owner had consented, even though the goods weren't counterfeit. Buying genuine goods abroad doesn't give you the right to import and resell them here without consent.
Summary coming soonNokia v HMRC
Nokia failed to make HMRC seize fake Nokia-branded phones that were passing through the UK between two countries outside the EU, because the goods were never going to be put on the EU market. Fakes that are only passing through, with no evidence they'll reach shelves here, weren't treated as counterfeit under the customs rules.
Summary coming soonWhat happens if a seller ignores the court?
Fred Perry v Brands Plaza
In a counterfeit Fred Perry clothing case, the court refused to let the defendants off for repeatedly ignoring court orders, but set aside an interim damages payment because it was based on evidence the defendants had never been shown. Ignore court orders and you can lose the right to defend yourself.
Summary coming soonBMW v Premier Alloy Wheels
BMW secured an exceptional search and seizure order against a business repeatedly caught selling counterfeit BMW-branded alloy wheels and badges, despite earlier undertakings (formal promises) not to do so. A seller's past undertakings and knowledge of infringement can help a trademark owner get urgent orders later.
Read our summaryLappet Manufacturing
Defendants accused of counterfeiting yashmaghs failed to have a trademark claim thrown out of the High Court or moved to the cheaper Intellectual Property Enterprise Court. A claim for an account of profits (handing over the profits made from infringing) isn't a money claim, so it can stay in the High Court without meeting the £100,000 threshold.
Read our summaryWhat I’d take from these counterfeit trademark cases
- 1What I'd take from this is that "genuine" isn't a defence on its own. Grey goods can infringe just as fakes do.
- 2Website blocking works against counterfeit sites, but the brand owner usually pays for it.
- 3Marketplaces aren't automatically liable for their sellers, so the seller is often the one to chase.
- 4Directors and family members who fund or help with copying can be personally on the hook.
- 5Sellers who break promises or ignore orders usually make things worse for themselves, and that history helps you get stronger orders.
If fakes or unauthorised imports are being sold under your name, a cease and desist letter is usually the first step. For counterfeit sites, our website takedowns service goes after them directly, and brand protection handles disputes that go further. None of this works without the right registration, so register a trademark for the goods you actually sell, and use trademark monitoring to spot copycats early.
Book a free call, email enquiries@thetrademarkhelpline.com or ring 0161 833 5400.
Related questions
This page is for information purposes only and does not constitute trademark advice or guidance. Case summaries are drawn from published UK judgments; summaries drafted with AI assistance and checked by The Trademark Helpline (how we write these). Last reviewed 30 October 2026.
