Mar 2, 2016

Mountain Climbed as High Court Orders Internet Service Providers to Block Infringing Cartier and Montblanc Websites

Luxury brands Cartier International Limited and Montblanc GmbH recently won an important case the result of which means various leading internet service providers (ISPs) are required to block websites selling counterfeit goods. The Defendants/ISPs involved were: BT plc, EE Limited, Sky UK Limited, TalkTalk Telecom Limited and Virgin Media Limited.

Following the ruling the ISPs must prevent access to five websites because they infringe the Claimant's trade marks by advertising and selling counterfeit goods. The trade marks in question included 'Cartier' and 'Montblanc'.

Earlier Decision

The ruling is the second time a Judge sitting in the High Court has been asked by the Claimants' to block websites selling counterfeit goods infringing their trade marks. The judgement by Hacon J in the present case directly applies the decision of Arnold J in 2014, in which he held that the Court had jurisdiction to extend the blocking of certain websites which infringed copyright to those websites which infringe trade marks rights too.

A full copy of the reported decision is available here Cartier International AG and others v British Sky Broadcasting Ltd and others [2014] EWHC 2254 (Ch) (Cartier I). Readers should note that Cartier I is under appeal and is expected to be heard in April 2016.

Legislative Background

Pursuant to section 97A CDPA 1988, UK courts have the power to grant injunctions against an ISP if it has 'actual knowledge' that someone has used its service to infringe copyright. There is no equivalent provision within the Trade Marks Act 1994 for trade mark infringement, however the ruling of Arnold J remedies this omission.

The ISPs were not represented in Court and took a neutral stance on blocking the sites, telling the judge in written submissions that closing five websites which offended the Claimants' trade marks may not "make any difference to the scale of infringement of the trade marks". However, Hacon J went on to say that "there is no requirement for the claimant to show that blocking access to the target websites in issue is likely to reduce the overall infringement of his trade marks".

Hacon J granted the application of the claimant's, applying the principles set out in Cartier I, pending the decision of the Court of Appeal which will either agree with the earlier decision of the High Court or reverse it.

Furthermore, Hacon J rejected the Defendants' argument that the Claimants' had failed to meet the threshold conditions set out Cartier I, which require ISPs services were used to infringe and that ISPs had actual knowledge of infringing activity. Proof of use of the ISPs services had been shown as it was possible to access the infringing websites using the ISPs services and the Defendant's had enough knowledge to know that these websites were infringing rights via their services, and this proof was provided to them by the claimant's.

Outcome

This is the first case since the law of trade marks was extended to the analogous right in copyright infringement cases whereby brand owners were given protection against the sale of counterfeit products. Hacon J felt compelled to apply the new principles despite noting that the first case remains under appeal the law may subsequently change. The decision is good news for brand owners who will hope the Court of Appeal does nothing to change the original decision.

The full judgement in the latest case can be viewed here – (Cartier International Ltd and another v British Telecommunications Plc and others [2016] EWHC 339 (Ch), 23 February 2016.)

in: Copyright, News, Trade Marks

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