The High Court has jurisdiction to stop internet service providers (ISP) allowing access to websites that breach trade mark rights by selling counterfeit goods, it has held, in the first case of its type.
The case, Cartier International and Others vs BSkyB and others [2014] EWHC 3354 (Ch), concerned the trade mark rights of Richemont, owner of luxury brands such as Cartier and Mont Blanc. Richemont selected sites that wholly infringed its trade marks and sought an injunction against an ISP to block access.
The question arose of whether the High Court had jurisdiction to grant an injunction—the court held that it did.
Jeremy Blum, partner at Bristows, says: “This decision is a real development for brand owners in fighting online counterfeiting.
“Since L’Oreal v eBay and the recent s 97A copyright cases it was generally viewed that trade mark owners ought to be able to obtain an injunction against an ISP intermediary to block access to websites that infringe trade mark rights, and this is the first decision confirming the UK courts have jurisdiction to grant such an injunction as well as setting out the principles to be applied in determining if an injunction should be made.
“Broadly whether an injunction against an intermediary should be made, the court must assess whether the injunction is proportionate, effective, dissuasive and not a barrier to legitimate trade. The interesting point in future will be the range of websites that will be able to be blocked; for example this case involved websites wholly engaged in infringing activity.”
