Who: Cartier International, Montblanc and Richemont as Claimants and Sky, BT, EE TalkTalk and Virgin, all ISPs, as Defendants
Where: The High Court of Justice, Chancery Division
When: 17 October 2014
Law stated as at: 3 November 2014
What happened:
The Claimants are all companies within the Richemont group who own many UK registered trade marks relating to luxury brands. The Defendants (the ISPs) have 95% of the market share of UK broadband users. The Claimants sought an order requiring the ISPs to block access to six websites which advertise and sell counterfeit goods.
In the past, orders requiring the ISP to block access to websites were made on the basis of s97A of the CDPA 1988 for copyright infringement. This application was an attempt to achieve the same result but for trade mark infringement. There is no statutory equivalent to s97A in trade mark law. This was the first application for a website-blocking order on the basis of trade mark infringement in the EU.
Section 37(1) of the Senior Courts Act 1981 provides that the High Court may grant an injunction where it appears to be just to do so. Article 11 of the Enforcement Directive 2004/48/EC provides that:
“…Member States shall also ensure that rightsholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe an intellectual property right…”
Arnold J held that s37(1) should be interpreted in light of Article 11 by virtue of the Marleasing principle where domestic legislation must be construed as far as is possible to achieve the result intended by an EU directive.
Threshold conditions satisfied
The Judge held that the following threshold conditions for making the order were satisfied: i) ISPs must be intermediaries, ii) users and/or operators of the website infringe the Claimants’ mark iii) the users and/or operators of the website must use the ISP to do that, and iv) ISPs must have actual knowledge of this.
In order for the Court to make the order sought, the relief must i) be necessary, ii) be effective, iii) be dissuasive, iv) be not unnecessarily complicated or costly, v) avoid barriers to legitimate trade, vi) be fair and equitable and strike a ‘fair balance’ between the applicable fundamental rights; and vii) be proportionate. Arnold J considered each of these factors and held that the order should be granted.
Arnold J noted that the Claimants had a legitimate interest in curtailing the sale of counterfeit goods, that there is also a public interest in preventing trade mark infringement and that the order would not interfere with the ISP’s freedom to carry on business. He considered alternative measures would not be as efficient as granting the blocking order.
Why this matters:
This decision now allows for trade mark proprietors to seek an order blocking the advertising and sale of counterfeit goods via the internet. It also opens up the possibility of intellectual property right holders seeking similar orders in respect of other rights such as patents or design rights. It remains to be seen whether the ISPs will appeal this decision or continue to challenge future applications since they now face an additional burden in terms of resources.
