Website-Blocking Orders, a step forward in Registered Trade Mark Enforcement

28 October, 2014

There are several methods of enforcement available to the owner of a registered trade mark against an infringer, which include an injunction, a claims for damages, domain name seizure and notification Customs authorities for the seizure of counterfeit goods.

 

A recent trade mark infringement case[1] brought by the Richemont group of companies (which owns luxury goods brands including Cartier and Montblanc) against the UK’s major ISPs (BT, Sky, Virgin Media) has extended the available remedies to include a ‘website-blocking order’, a type of injunction commonly previously sought only in cases of Copyright infringement, is also available as a method of enforcing registered trade mark rights against infringers.

 

A ‘website-blocking order’ is an injunction against an Internet Service Provider (ISP) (such as Talk Talk or Sky) which prevents consumers from accessing a particular website. Blocking orders are particularly attractive to rights holders as they circumvent what can be an expensive and frustrating route of pursuing highly evasive counterfeiters through the courts.

 

Website-blocking orders themselves are not new; they are a prescribed remedy available in respect of copyright infringement under the Copyright Designs and Patents Act 1988[2] and can be granted where an ISP has actual knowledge of a website operator using their service to infringe copyright. Hollywood studios have used such injunctions in the past to block access to websites illegally streaming television shows and films: most recently such an order was made against the UK’s six main ISPs[3].

 

However there was no specific domestic legislation providing for website-blocking orders in respect of trade marks that mirrored those available in respect of copyright infringement. The recent Richemont case therefore broke new ground when The Honourable techMr Justice Arnold granted website-blocking orders to prevent access to specific websites that were infringing Richemont’s registered trade marks by selling counterfeit goods.

 

Registered Trade Marks

The Richemont group protects its brands with registered trade marks, for example, the word ‘Cartier’; and the distinctive Mont Blanc logo. The infringing websites that were the subject of the Richemont case (the Target Websites) advertised and sold the counterfeit goods by using Richemont’s trade marks in their domain names (www.hotcartierwatch.com, www.cartierloveonline.com, www.monblancpensonlineuk.com); and by displaying the registered trade marks on the Target Website pages, giving the impression that those websites were either official websites of the Richemont group, or were at least selling genuine products.

 

Website-blocking orders were sought in this case as they were viewed by the Richemont group as being potentially the most effective way to tackle the sale of counterfeit outside of the jurisdiction (in China) by professional counterfeiters. The ISPs in this case resisted the orders sought, arguing that as there were no specific provisions in the existing trade mark legislation providing for such a remedy, the Court had no jurisdiction to make such orders and there was particular concern about the potentially high costs of compliance for ISPs if the orders were granted. However Richemont successfully argued that the Court did have jurisdiction to make such orders under a general provision of domestic legislation, whereby the Court may grant an injunction, in cases where “it appears to be just and convenient to do so.”

 

The Court determined that Richemont had a legitimate interest in limiting the Target Websites’ infringing activity and therefore granted the website-blocking orders, citing with regards to counterfeit goods, a public interest in preventing trade mark infringement.

 

The case set out clear conditions that must be met before a website-blocking order would be granted in respect of registered trade marks:

  • The ISP’s services must be being used by a third party to infringe an IP right;
  •  
  • The users and/or operator of a target website must be infringing the registered trade mark;
  •  
  • The users and/or operator of a target website must be using the ISPs services to infringe the registered trade mark; and
  •  
  • The ISP must have actual knowledge of the infringement.

 

The Future

Whilst the decision in the Richemont case will be embraced by rights holders, it is unclear as to whether this will open the floodgates to further claims. The Court has been clear in setting down criteria to be met and safeguards to be considered when an application is made for such an order.

 

The concerns that were raised in this case by the ISPs about the potential costs burden of complying with such orders have been noted and will inevitably be considered in future applications. Applications for website-blocking orders for registered trade mark owners may therefore not be as straightforward as they would be in the case of copyright infringement.

 

It is important to also be aware that there are other remedies available when enforcing registered trade mark rights, and therefore it is recommended that specialist legal advice is sought at an early stage.

 

[1] (1) Cartier International AG (2) Montblanc-Simplo GMBH; and (3) Richemont International SA v. (1) British Sky Broadcasting Limited (2) British Telecommunications PLC (3) EE Limited (4) Talk Talk Telco Limited (5) Virgin media Limited and Open Rights Group [2014] EWHC 3354 (Ch)

[2] Section 97A of Copyright Designs and Patents Act 1988

[3] Paramount Home Entertainment International Limited and others v British Sky Broadcasting Ltd and others [2014] EWHC 937 (Ch)