UK Court orders 6 main UK ISPs to take down infringing websites based on trademark infringement
By Béatrice Martinet Farano
On 17 October 2014, the UK High Court issued a landmark decision, ordering the 6 main UK ISPs (including Sky, British Telecom and Virgin Media) to block a series of websites which were apparently dedicated to the advertising and sale of products infringing the Richemont group’s (including Cartier’s) trademark rights.
While there have been a number of decisions in Europe issuing blocking orders against copyright infringing websites (see e.g. Newzbin and The Pirate Bay, Newsletter No 2/2012 p. 9-10 and FirstRow, Newsletter No 5-6 2013, p. 26), blocking orders based on trademark infringement remain extremely rare.
In this decision, the Court held that the threshold conditions to issue a blocking order under article 11 of the Enforcement Directive were met, and specifically that:
- The 6 ISPs were intermediaries whose services were being used to infringe IP rights (thereby adopting a broad definition of “intermediaries”);
- Richemont’s trademarks rights had been infringed by the targeted website, stressing among other facts that the currency (English pound available), language (English), and shipment availability in England, all pointed to the occurrence of a trademark infringement in the UK
- That the operator of the target website had used the ISPs services to infringe; and
- The ISPs had knowledge of such infringement (through cease and desist letters from the rights holders and through the application for the injunction).
The Court then balanced the opportunity of such order against the principles of necessity, effectiveness, dissuasiveness, cost effectiveness, obligation to avoid barriers to legitimate trade, fairness and equity, as well as the principle of proportionality (as discussed in L’Oreal v. eBay, see Newsletter 4-5 2011 p. 7-8) to conclude, in a lengthy analysis, that none of these principles raised a substantial bar to the principle of issuing blocking orders against websites dedicated to infringement.
While the decision did not discuss either the potential liability of these ISPs for trademark infringement (the decision makes clear from the first paragraph that “for the avoidance of doubt, there is no suggestion that the ISPs have infringed the trademark or are liable for infringement by the operators of the target website”), nor their obligations to take down content upon receipt of a notice and take down identifying an infringing website or content, this confirmation from a European court that blocking orders are now available to trademarks holders may have a decisive impact.