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8 January 2015
Mr Justice Arnold sitting in the Chancery Division of the High Court of England & Wales has recently handed down his decision in Cartier, Montblanc and Richemont v BSkyB, BT, TalkTalk, EE and Virgin (Open Rights Group intervening) in which he granted orders requiring Internet Service Providers to block access to websites which infringe trade mark rights.
The case involved a group action bought by Cartier, Montblanc and Richemont (the “Claimants”) against BSkyB, BT, EE, TalkTalk and Virgin, the UK’s largest Internet Service Providers (ISPs). The Claimants were owners of trade mark registrations for a number of well known marks, including CARTIER, MONTBLANC and IWC. They were seeking orders compelling the ISPs to block access to six websites offering counterfeit versions of their luxury goods.
While there have been a number of court orders over the last few years requiring ISPs to block access to websites which have been found to infringe copyright, this is the first case in which a European court has ordered ISPs to block access to websites on the basis of trade mark infringement.
The copyright cases have generally been brought by the film industry to prevent piracy and have been based on Section 97A of the Copyright Act, which provides that ‘The High Court … shall have power to grant an injunction against a service provider, where that service provider has actual knowledge of another person using their service to infringe copyright’.
Unfortunately, the UK Trade Marks Act does not have a counterpart to Section 97A of the Copyright Act and one of the questions was, therefore, whether the court had jurisdiction under the law to grant the requested orders. However, despite the lack of a comparable provision, the Court was able to rely on Article 11 of the EU Directive on the enforcement of Intellectual Property (Directive 2004/48/EC) as this applies to infringement of all Intellectual Property Rights, rather than just copyright. The Directive requires all Member States to apply remedies and penalties against those involved in counterfeiting and piracy and Mr Justice Arnold relied on this Article in granting the requested orders blocking access to the websites.
Although Mr Justice Arnold granted the requested orders, it is important to note that the orders came with a number of safeguards against abuse, such as the possibility of discharging/varying the order. Furthermore, in order to limit the number of websites targeted by brand owners, Mr Justice Arnold inserted a “sunset clause” into the orders, so that the orders will cease to have effect after a certain period of time, unless the ISPs consent to the orders being continued, or the Court orders that they should be continued. The view of the Court was that the relevant period should be two years. This is in contrast to the website blocking orders granted in the copyright cases, in which no timescales were set, (although they may be discharged or varied in the event that there is a change in circumstances).
The outcome of the case is a welcome step forward in the fight against counterfeiting and provides trade mark owners with another weapon in their armoury to assist in their battle against the online sale of counterfeit goods.
Trade Mark group
If you require further information on anything covered in this briefing, please contact Dominic Murphy (firstname.lastname@example.org; +44 1926 310 700) or your usual contact at the firm.
This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.
© Withers & Rogers LLP, January 2015