Case law: Trade mark owners can apply for order requiring ISPs to block access to websites that infringe their rights

Trade mark owners will welcome new powers to obtain court orders requiring Internet Service Providers (ISPs) to block access to websites infringing their trade marks by selling fake goods, following a landmark High Court ruling.

Owners of a number of UK registered trade marks for luxury goods applied to the High Court for an order that six of the main ISPs block access to a number of websites that were infringing their rights by selling fake goods.

The Court granted the orders, but subject to the following safeguards:

• ISP subscribers affected could apply to the Court to discharge or vary the orders.
• Anyone who tried to access a blocked website should see a message stating who had obtained the order, informing them they had a right to apply to discharge or vary the order.
• The order should be time-limited (a two-year period was suggested).

However, the Court ordered that the trade mark owners bear the costs of the application. Since such applications are likely to be expensive, trade mark owners will need to judge whether the damage to their business from particular websites warrants an application.

While such orders are often made where there has been copyright infringement, this is a new remedy for trade mark infringement.

Operative date

• Now

Recommendation

• Trade mark owners should consider whether they can obtain court orders requiring ISPs to block access to websites which are infringing their trade mark rights, and whether the potential costs are warranted by the damage the infringement is causing the business.

Case ref: Cartier International AG & Ors v British Sky Broadcasting Ltd & Ors [2014] EWHC 3354