High Court Website-Blocking Orders Provides Further Protection to IP Rights-Holders

30 October 2014

Author: Helen Cosgrove
Practice Area: Intellectual Property

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The High Court in England and Wales has granted orders requiring several internet service providers “ISPs” to block access by their subscribers to certain websites that advertised and sold goods infringing certain registered trade marks.  The orders were in a similar format to those that the court had granted previously in relation to copyright infringement however the decision represents a development in the law as, unlike the position with copyright infringement, there is no domestic legislation which provides for website-blocking orders in the context of trade marks.

Background

In Cartier International AG and others v British Sky Broadcasting Ltd and others [2014] EWHC 3354 (Ch), 17 October 2014.)  the claimants were the owners of a large number of UK Registered trademarks for Cartier, Montblanc, IWC and other luxury brands. The defendants (Sky, BT, EE, TalkTalk and Virgin) were the five main retail internet service providers in the UK, between them having a market share of approximately 95% of UK broadband users.

The claimants applied for orders requiring the ISPs to block, or at least impede, access by their subscribers to six websites which advertised and sold goods infringing their trade marks. The orders sought were in essentially the same form as the orders the court had granted in the most recent cases concerning section 97A of the Copyright, Designs and Patents Act 1988 “CDPA 1988”.

The decision

The High Court granted the blocking orders substantially in the form sought by the claimants subject to the following safeguards to ensure that the orders struck the correct balance between the protection of the rights of the claimants on the one hand, and the ISPs' freedom to carry on business and Internet users' freedom to receive information on the other:

  • The orders (and similar future orders) should permit affected ISP subscribers to apply to the court to discharge or vary the orders.
  • When users attempt to access the blocked websites a notice should appear to state that access has been blocked by court order, identifying the parties that obtained the order and stating that affected users have the right to apply to the court to discharge or vary the order.
  • a ‘sunset clause’ was incorporated to indicate that the orders would cease to have effect at the end of a defined period, provisionally defined as two years.

Conclusion

Although blocking injunctions are not new, in relation cases of online copyright infringement, until now they have been made pursuant to s.97A of CDPA 1988 providing the High Court the power to grant injunctions against service providers, where that service provider has actual knowledge of another person using their service to infringe copyright. 

There is no provision equivalent to s.97A CDPA 1988 in the Trade Marks Act and the key legal development in this case was to fill the gap in domestic legislation to reflect the duty imposed by the Enforcement Directive (2004/48/EC) on national courts to make blocking injunctions available against IP infringements generally and not just in the copyright context.

The court's concerns about the costs burdens when granting blocking orders in the counterfeiting context are noteworthy.  Generally, in these types of applications the rights-holders bear the costs of the application (other than those occasioned by the ISPs' resistance) and monitoring the websites after implementation of any granted orders, while the ISPs bore the costs of implementation and implementing any updates resulting from the monitoring. 

However there are is a huge number of websites that offer counterfeit goods leading to a potential flood of applications for blocking orders from trade mark right-holders.  In considering costs trade mark holders may have to concentrate their resources and request blocking orders only in respect of web sites that they believe are causing significant damage to their business.

For more information contact Helen Cosgrove.

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