In Cartier v BT ( EWHC 339 (Ch)) the High Court has applied the principles in the landmark 2014 decision involving the same parties1, and granted a website blocking order against the UK’s five main internet service providers on the basis of the claimants’ trade mark rights.
Website blocking orders have become common place in respect of copyright infringement in recent years (thanks to s.97A CDPA 1988 and a line of decisions starting with Twentieth Century Fox Film Corp v British Telecommunications plc). The 2014 Cartier decision was notable because it was the first time that a website blocking order was granted as a result of the online sale of counterfeit (i.e. trade mark infringing) goods.
The claimants in this most recent action were again the owners of CARTIER and MONTBLANC trade marks (used for luxury watches and pens respectively), and the defendants were BT, EE, Sky, TalkTalk and Virgin Media.
An appeal to the 2014 Cartier decision is due to be heard in April this year, so His Honour Judge Hacon (sitting as a High Court judge) decided that the appropriate course of action was to apply the principles set out by Mr. Justice Arnold in what he labelled ‘Cartier I’.
The recent decision therefore provides a useful reminder and summary of those Cartier I principles. In short, a website blocking order will be granted against an ISP if (i) four ‘threshold’ conditions are met: and (ii) it is proportionate to grant the blocking order.
The threshold conditions are that:
- The ISPs are ‘intermediaries’ within the meaning of Art.11 of the Enforcement Directive2;
- The user and/or operator of the target website is infringing the claimant’s trade marks;
- The user and/or operator of the target website is using the ISP’s service to infringe (Arnold and Hacon have agreed that simply accessing a counterfeit selling website using the defendant’s broadband services is enough to meet this threshold); and
- The ISPs have actual knowledge of the infringing activity (which has been said to be satisfied by providing the ISPs with written notice and, in this case, evidence in support of an application to Court).
Once those threshold conditions are satisfied, the Court must be satisfied that the injunction sought is proportionate to the objective pursued. The factors the Court will consider are:
- Whether the injunction would seriously discourage users from accessing the target website;
- Whether the injunction is likely to dissuade third parties from infringing in the future;
- The difficulty and cost for the ISPs in complying with the order;
- Whether the injunction can be strictly targeted so as not to affect legitimate users;
- Proportionality – in particular taking into account the comparative importance of the rights of the respective parties and the ISPs’ users, the availability of alternative measures, the likely efficacy of the proposed measures, the costs of implementing the order, dissuasiveness, and the impact on lawful users; and
- Whether there are appropriate safeguards against abuse (such as provisions to vary the order, and a ‘sunset’ clause).
In applying these principles, a striking aspect of both Cartier decisions is how dismissive both Arnold J. and now HHJ. Hacon have been of the alternative options open to trade mark owners: taking action against the primary infringers is accepted to be too difficult, and de-indexing from search engines, targeting the websites’ hosts and seizing domain names or notifying payment processing service providers are all deemed unrealistic measures or unlikely to work.
For now, at least, ISPs look like a viable solution for brands trying to cut off the online sale of counterfeit goods into the UK. Whether this remains the case going forward will depend on the Court of Appeal’s decision in the appeal to Cartier I.