Website-blocking injunctions have been regularly granted in the UK in recent years to prevent copyright infringement under specific rules that give the courts power to award such injunctions. Such injunctions can be sought by owners of copyright protected content – typically software, music, or films – to prevent UK internet users from accessing websites that are illegally distributing their content. However, there is no equivalent statutory power to grant such injunctions for trade mark infringement in the UK.
In a recent case (Cartier v B Sky B) involving six websites all selling counterfeit goods passing off the Richemont brand, the brand owners asked the High Court to grant injunctions against the six major Internet Services Providers (ISPs) in the UK requiring them to block their subscribers’ access to such sites in order to prevent continued trademark infringement by the operators of those sites.
In the absence of an express statutory power to grant such injunctions in trademark cases, the court had to determine whether or not its inherent power to grant injunctions under the Supreme Courts Act could be used and if so, whether such orders sought were an effective and proportionate remedy.
The judge decided that the court did have such jurisdiction. He also concluded that blocking orders would not interfere with the way in which ISPs provided services to their customers. Furthermore the ISPs already possessed the requisite technology with which to block websites and so no costs would be incurred in having to acquire new technology and therefore awarding the injunction would be effective and proportionate.
The ISPs argued that there were less burdensome and more effective ways to deal with online infringement, such as cease and desist letters, takedown notices and tackling the import of counterfeit goods via customs seizures. However, the judge was not persuaded by these arguments. One of the key advantages of website blocking was the ability to update the orders to include additional related websites and thereby avoid attempts by the operators of counterfeit sites to circumvent the orders (for example, by switching domain name).
The case is good news for trademark owners, who now have the option of seeking an injunction effectively preventing the vast majority of internet users from accessing websites selling counterfeit goods passing off their trademarks, although the cost and complexity of obtaining such injunctions against reluctant ISPs should not be underestimated.