Cartier -v- BSkyB: High Court orders ISPs to block access to trade mark-infringing websites

The High Court has granted orders requiring internet service providers Sky, BT, EE, Talk Talk and Virgin (ISPs) to block access to a number of counterfeiting websites.¹ The decision marks an important development in the protection of brands online as, while there are specific UK statutory provisions dealing with blocking orders for copyright infringement, there is no such legislation concerning trade marks.

Key law

• Article 8(3) of the InfoSoc Directive:² rightholders may apply for injunctions against intermediaries whose services are used by a third party to infringe copyright or a related right.
• Article 11 of the Enforcement Directive:³ rightholders may apply for injunctions against intermediaries whose services are used by a third party to infringe an intellectual property right generally.
• S37(1) of the Senior Courts Act 1981:⁴ the High Court may grant an injunction when it appears just and convenient to do so

Dispute

The claimants (collectively, Richemont) own a large number of UK registered trade marks, including CARTIER, MONTBLANC, IWC and other brands (the Trade Marks). Richemont sought orders requiring the ISPs to block access to six websites that infringed its Trade Marks by advertising and selling counterfeit goods (the Target Websites). The Target Websites, for example www.cartierloveonline.com, each targeted UK customers offering for sale replicas of products bearing one of the Trade Marks.

Judgment

Jurisdiction

The key EU provisions which allow rightholders to apply for injunctions against intermediaries are Article 8(3) of the InfoSoc Directive and Article 11 of the Enforcement Directive. While the UK implemented Article 8(3) concerning copyright infringement by inserting s97(A) into the Copyright, Designs and Patents Act 1988 (the 1988 Act), the Government did not think it necessary to implement the relevant sentence within Article 11, therefore providing no specific statutory provision equivalent to s97(A) in relation to trade marks.

However, Mr Justice Arnold held that the Court had the power to grant an injunction in the present case under s37(1) of the Senior Courts Act 1981 as it was just and convenient to do so.

Threshold conditions

Case law provides four conditions which must be met in order for website-blocking injunctions to be granted. Applying these to the present case, the Court found:

• ISPs are intermediaries;
• the Target Websites infringed the Trade Marks (this applied even where the Target Websites stated the goods were replicas, as this could still lead to post-sale confusion);
• the Target Websites' operators used the ISPs' services to infringe the Trade Marks; and
• the ISPs had actual knowledge of the infringement.

Principles and application

Mr Justice Arnold assessed whether granting the orders would be proportionate, and in particular, he held that:

• Richemont had a legitimate interest in preventing infringement of the Trade Marks;
• alternative measures, such as taking action against website operators, hosts, payment processors and domain name or customs seizure were not as effective and no less onerous;
• Richemont was not required to show that blocking measures would lead to a reduction in the overall level of infringement of the Trade Marks. He also noted that previous s97(A) orders had generally been a success;
• the costs of implementing the orders should be broadly the same as when implementing s97(A) orders. Rightholders should bear the costs of making unopposed applications and monitoring the targeted websites after implementation, while the ISPs should cover the costs of implementing orders and subsequent updates. The Court acknowledged that ISP costs may be significant if applications grow rapidly in number; and
• blocking should be targeted so that lawful internet users are not adversely affected.

Good news for rightholders

Mr Justice Arnold granted the orders, finding the likely costs burden on the ISPs was justified and the orders were proportionate. To safeguard against abuse, the ISPs and operators can apply to the Court to discharge/vary the orders following a change in circumstances, and the orders will cease to have effect after a defined period (provisionally set at two years) unless either the ISPs consent or the Court orders that they should be continued.

In recent years, film studios, record companies and the FA Premier League have obtained orders requiring ISPs to block access to websites that infringe copyright pursuant to s97(A) of the 1988 Act (note, for example, the recent injunction issued to a number of record companies, which we review in this newsletter). However, this is probably the first case in the EU to consider trade mark infringement in this context, and this decision may lead to numerous similar applications from other trade mark owners.

Please click on the links below for the other articles in the December 2014 IP/IT newsletter:

• No spec saving for Asda: genuine use of a trade mark considered by Court of Appeal
• 1967 Ltd -v- BSkyB: High Court orders ISPs to block access to copyright-infringing music websites
• ECJ ruling in Deckmyn provides further clarity to the UK parody exception
• Revenge porn: a dish that could serve you with a jail term
• TRIPP TRAPP: seat at the table of never-ending rights for shape marks remains elusive

_Notes:

_{¹ Cartier International AG & Ors -v- British Sky Broadcasting Ltd & Ors [2014] EWHC 3354 (Ch) (17 October 2014)}

_{² Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society, transposed into UK law by the Copyright and Related Rights Regulations 2003, SI 2003/2498.}

_{³ European Parliament and Council Directive 2004/48/EC of 29 April 2004 on the enforcement of intellectual property rights, transposed into UK law by the Intellectual Property (Enforcement, etc.) Regulations 2006, SI 2006/1028.}

_{⁴ The Court also considered: Article 5 of European Parliament and Council Directive 2008/95/EC of October 2008, Articles 5(1)(a) and (3), which were implemented in the UK by s10(1) and (4) of the Trade Marks Act 1994; European Parliament and Council Directive 2000/31/EC of June 2000, which was transposed into UK law by the Electronic Commerce (EC Directive) Regulations 2002, SI 2002/2013; and The Charter of Fundamental Rights of the European Union}