Following the first decision in Roadshow Films v Telstra Corporation to block access to foreign websites, and the subsequent successful applications by Universal Music and Roadshow, website blocking has become a tool for copyright owners to prevent access to unauthorised online content hosted outside Australia. This article looks at developments in the UK, where website blocking has been used to block trade in counterfeit goods, and considers whether such relief is available in Australia.
No express s 115A equivalent in the Trade Marks Act 1995
- the website is located outside Australia;
- the website infringes, or facilitates the infringement of, copyright; and
- the primary purpose of the website is to infringe, or to facilitate the infringement of, copyright.
The Australian Trade Marks Act 1995 (Cth) contains no similar provision empowering a Court to grant website blocking injunctions for trade mark infringement. This would suggest that website blocking injunctions are not available to block access to websites that infringe, or facilitate the infringement of, registered trade marks. However, recent cases in the UK might suggest otherwise.
Of particular interest is that in the UK, the Trade Marks Act 1994 (UK), like the Australian trade marks legislation, does not contain a website blocking provision.
The situation in the UK: Express provision not necessary
In Cartier International AG v British Sky Broadcasting Limited  EWCA Civ 658 (Cartier), the UK Court of Appeal held that, despite the fact that the Trade Marks Act 1994 (UK) does not contain a website blocking provision, the Court is able, under its general power, to grant injunctions sought by trade mark owners to compel internet service providers (ISPs) to block websites that provide access to infringing or counterfeit goods. In that case, the Court of Appeal upheld the validity of the injunctions sought by Richemont (the owner of luxury brands including Cartier and Montblanc) requiring five UK ISPs to block access to websites advertising and marketing counterfeit goods, and thereby infringing Richemont’s trade marks. In doing so, the Court held that it was not necessary for an applicant to show that the blocks would lead to a reduction in the infringement of the trade marks. The applicant only needed to show that it would discourage users from accessing the relevant website.
The Court observed that the general power to make orders with respect to injunctions is founded in a provision of the UK legislation which is in similar terms to s 23 of the Federal Court of Australia Act 1976 (Cth) and other relevant Federal Circuit and State court provisions. The broad powers of the Australian Federal Court are emphasised by rules 1.32 and 1.33 of the Federal Court Rules 2011 (Cth), which provide that the Court can make any orders it deems appropriate in the interests of justice, subject to any conditions the Court considers appropriate.
What might this mean for Australia?
Whilst as yet untested, it is foreseeable that an Australian Court's general power could be enlivened in respect of trade mark infringement, and the Court could grant an interim injunction to compel ISPs to block websites which facilitate trade mark infringement, pending a final hearing. Regard could be given to some or all of the considerations provided in s 115A(5) (modified to refer to trade marks rather than copyright). In theory, as the law currently stands, if a trade mark owner can establish a prima facie case that particular websites infringe or authorise the infringement of a trade mark and the balance of convenience is in the applicant's favour, a Court may grant an interim injunction to compel ISPs to at least temporarily block the offending websites.
Section 115A is a unique statutory provision that was carefully drafted in order to provide relief in circumstances where the primary purpose of the website is to infringe or authorise the infringement of copyright. Many of the relevant considerations in s 115A(5) were drafted with close consideration to the factors considered by the Court of Appeal in Cartier. Whether or not it would be necessary to address these considerations in a trade mark context would be a matter for the Court, but it is likely that many of them would be relevant to the Court's consideration of the balance of convenience. Website blocking may also be available as a form of final relief.
Alternatives to blocking orders?
There are other methods that trade mark owners can use in order to discourage and/or decrease the number of counterfeit goods being imported and sold in Australia including, for example, customs seizure notices. However, it may be that website blocking orders provide trade mark owners with another useful tool to block access to infringing products or services and, in doing so, educate and inform consumers and the public more generally about their IP rights. The extension of the current s 115A piracy regime to trade mark infringement and counterfeiting would provide a useful additional avenue for brand owners to seek relief against products that are distributed without permission online.