Cartier v BSkyB – Court of Appeal confirms website blocking orders for Trade Mark infringement
20 July 2016
The Court of Appeal has handed down its decision in Cartier International and Others vs BSkyB and Others  EWCA Civ 658 and has upheld the High Court’s decision. Our earlier report of the High Court decision can be found here.
High Court Summary
The Claimants (Cartier, Mont Blanc and Richemont) own trade mark registrations for a number of well-known marks, including CARTIER, MONTBLANC and IWC. They sought orders from the Court compelling the internet service providers BSkyB, BT, EE, TalkTalk and Virgin (“the ISPs”) to block access to six websites offering counterfeit versions of their luxury goods.
Mr Justice Arnold sitting in the High Court confirmed that the ISPs could be ordered to block access to websites that were infringing the Claimants’ trade marks. Traditionally, such an action was applicable in copyright matters only and not in connection with trade mark disputes where there was thought to be no statutory basis for blocking injunctions.
Court of Appeal
The ISPs appealed to the Court of the Appeal (“the CoA”) on the basis that they do not have a duty to prevent trade mark infringement by third parties and are merely innocent parties in these circumstances. The CoA confirmed that the ISPs were not guilty of any wrongdoing as they had not infringed the Claimants’ trade marks or acted in conjunction with the operators of the websites offering the counterfeit goods for sale.
Nevertheless, the CoA held that the ISPs were integral in the activities of the infringing websites. For that reason, the ISPs could be ordered to block access to websites provided the following conditions were met:
- the ISP must be an intermediary whose services are used by a third party to infringe an intellectual property right;
- either the users or operators of the website must be infringing the claimant’s trade marks;
- users or operators of the website must use the services of the ISPs; and
- ISPs must have actual knowledge of the users or operators of the website using their services to infringe the claimant’s trade marks.
In assessing whether a website blocking order should be made, the CoA confirmed that the order must (i) be necessary; (ii) be effective; (iii) be dissuasive; (iv) not be 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.
The CoA also considered who should be the rightful bearer of the costs of implementing the website-blocking injunction. It was held that the costs should be borne by ISPs as opposed to the rights holders.
Impact for Brand Owners
The above is welcome news for trade mark owners as the availability of website-blocking orders provides an additional means of action to prevent the infringement of their brands in the ever expanding online space.
Trade Mark group
If you require further information on anything covered in this briefing, please contact Mark Caddle (email@example.com; +44 207 940 3600) 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, July 2016