Jul 12, 2016

Blocking Injunctions Available in Online Trademark Infringement Cases

The Court of Appeal, in affirming Arnold J's 2014 judgment in the Cartier case (the 2014 judgment, Cartier International AG & Ors v British Sky Broadcasting Ltd & Ors, can be read here), has confirmed that blocking injunctions are available in online trade mark infringement cases.

Cartier Case

In the original Cartier case, Richemont (owners of the Cartier, Montblanc and IWC brands), applied for and were granted two blocking injunctions against five of the major internet service providers (ISPs) in the UK, in respect of websites selling counterfeit goods.  The injunctions were granted on the basis that the goods have or the websites display trade marks registered by companies such as Richemont.  Such registrations are made to protect brands and restrict the use of them.

The Court of Appeal judgment is welcome confirmation on this point of law which also affirmed that ISPs should bear the costs of implementing blocking injunctions.

What is, and what is the extent of, a Blocking Injunction?

A blocking injunction requires ISPs to remove or impede access to a website, meaning the site would not be available to internet users in the UK. Blocking injunctions were previously only available in copyright cases and not in respect of infringement of other types of intellectual property. The Court of Appeals affirmative judgment clearly establishes that the court has jurisdiction to grant injunctions against intermediaries (ISPs), where their services are used to infringe in trade mark cases.

INCOPRO, which facilitates the identification and prioritisation of counterfeit websites, has suggested in its report on the Court of Appeal decision (found here) that there is now "significant potential for blocking injunctions to be extended to other areas where websites and web locations are infringing the law... for example… privacy and defamation claims".

If you have any questions related to the above or intellectual property rights in general please do not hesitate to contact the team at McDaniel & Co. on 0191 281 4000 or legal@mcdanielslaw.com

in: News, Trade Marks

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