On 17 October 2014, the English High Court ruled that trade mark proprietors can obtain court orders obliging Internet Service Providers (“ISPs”) to block websites whose operators are committing trade mark infringement by advertising and selling counterfeit goods online. Cartier, Montblanc and Richemont v BSkyB, BT, TalkTalk, EE and Virgin (Open Rights Group intervening)  EWHC 3354 (Ch).
The three claimants joined in the proceedings were related; Cartier, Montblanc and Richemont are all subsidiaries of the well-known Swiss luxury goods company Compagnie Financière Richemont SA (”Richemont”). The five defendants, meanwhile, were all ISPs. Richemont had previously contacted the ISPs and protested against certain websites infringing its trade marks by advertising and selling fake goods. The ISP’s countered by saying that Richemont did not take enough action itself to get the websites shut down and that preventing access would negatively affect legitimate users.
The High Court held that the operators of the websites were infringing claimants’ trade marks by placing advertisements and offers for sale on the internet which were targeting UK consumers. He also ruled that “the ISPs have an essential role in these infringements, since it is via the ISPs’ services that the advertisements and offers for sale are communicated to 95% of broadband users in the UK.” With regards to the claim that legitimate users would be negatively affected by ISPs having to block access, Justice Arnold made it clear that the entitlement of internet users to receive information did not cover participation in trade mark infringement and that if the orders are properly executed, with adequate safeguards built in, legitimate users should not be affected.
Justice Arnold stated that he would “make orders substantially in the form sought by Richemont”, however he wanted the orders to incorporate the following additional safeguards:
- future orders should expressly permit affected subscribers to apply to the Court to discharge or vary the orders – this would ensure the protection of users’ rights
- the page of the blocked website should identify which parties obtained the order – this would mean that affected users have the right to apply to the Court to discharge or vary the order.
- the order should contain a “sunset clause” so that it will cease to have effect at the end of a defined period unless either the ISPs consent to the orders being continued or the Court orders that they should be continued – this would enable the practical operation of the orders to be reviewed in the light of experience.
This is a truly groundbreaking decision. Never before has an ISP provider in Europe being forced to block or impede access to websites which infringe a proprietor’s trade marks by advertising or selling counterfeit goods online. The ramifications of this ruling for ISPs, unscrupulous website operators and trade mark proprietors will no doubt stretch far beyond the borders of the United Kingdom and will echo loudly throughout the rest of Europe. It is highly likely that other European judiciaries will follow suit.