In the recent case of Cartier and Another v British Telecommunications and Others  EWHC 339 (Ch) ("Cartier II"), HHJ Hacon handed down injunction orders requiring the five main ISPs in the UK to block access to certain websites that infringed Cartier’s trade mark rights. This case represents another step forward for brand owners seeking to prevent the sale of counterfeit goods on the internet. HHJ Hacon applied and expanded upon the precedent laid down by Arnold J in Cartier I. The judgment in Cartier I is currently undergoing appeal, so it is possible that this decision may also be appealed.
The Cartier II judgment follows Arnold J’s landmark ruling in Cartier International AG v British Sky Broadcasting Limited  EWHC 3354 (Ch) ("Cartier I"), which found jurisdiction for a site blocking order to combat counterfeiting (i.e. trade mark infringement). Prior to this, only pirate (i.e. copyright infringing sites) had been blocked in the UK. In Cartier I, Arnold J took the view that, in the context of a website-blocking application, s37(1) of the Supreme Court Act 1981 allows the courts to grant an injunction in all cases in which it appears to be just and convenient to do so. In order to be just, the courts must act in accordance with Articles 3 and 11 of the Enforcement Directive and Article 12 to 15 of the E-Commerce Directive. Arnold J granted the injunctions against the ISPs and the case is now under appeal and was due to be heard on April 13, 2016.
In Cartier II, HHJ Hacon deemed it correct to apply the principles laid down in Cartier I, the reasoning of which he assumed was correct pending any Court of Appeal decision to the contrary. Arnold J had laid down that four threshold requirements must be satisfied before turning to the court's discretion in the usual sense, that:
- the ISPs must be intermediaries within the meaning of Article 11;
- the users and/or the operators of the website must be infringing the claimant's trade mark(s);
- the users and/or the operators of the website must use the ISPs' services to infringe; and
- the ISPs must have actual knowledge of infringing activity. This means actual knowledge of one or more persons (who need not be identified) using the ISPs' services to infringe trade mark(s). It need not extend to knowledge of a specific infringement of a specific trade mark by a specific individual.
HHJ Hacon rejected the defendants' arguments that the claimants had failed to satisfy the threshold conditions. Proof of use of the defendants' services had been established because it had been shown by the Claimants that the websites could have been accessed using the defendants' services. The defendants had the requisite knowledge of infringement because they had received the claimants' evidence that the sites could be accessed using the ISPs’ services and evidence of test purchases made from the sites.
HHJ Hacon held that it was not necessary to notify the infringing website operators of the application. The ISPs had been notified and could call evidence from the operators of the target websites. The judge also considered that the injunction sought would be proportionate, that the difficulty in trying to take action against the primary wrongdoers, that is to say the operators of the infringing websites, does not affect the proportionality of the injunction sought.
With regards to efficacy and dissuasiveness, HHJ Hacon confirmed that “although the presence of alternative websites may in certain circumstances have a limited bearing on proportionality, 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”.
The points addressed by HHJ Hacon in this judgment are useful in further clarifying the evidential requirements in site blocking applications in the context of websites selling counterfeit goods that infringe trade mark rights. It should be noted, as it was by HHJ Hacon several times, that Cartier I is currently on appeal. The Cartier IIjudgment may assist the Court of Appeal when deciding the appeal, which in turn may have a bearing on the European Commission’s review of the Enforcement Directive, and future EU legislation. If the Cartier I appeal is upheld, this type of blocking injunction will be more regular going forward, the ISPs will refrain from contesting the orders (as they did after the first couple of orders under s97A Copyright Designs and Patents Act 1988), which will be welcome news for brand owners.