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Case law: Court clarifies when trade mark owners can apply to block websites infringing their trade mark rights

Trade mark and other intellectual property owners whose rights are being infringed on third party websites should consider applying for blocking orders against relevant Internet Service Providers to block the infringing website, following a recent ruling.

Legal Alert

This update was published in Legal Alert - April 2016

Legal Alert is a monthly checklist from Atom Content Marketing highlighting new and pending laws, regulations, codes of practice and rulings that could have an impact on your business.

Businesses whose copyright is being infringed online can apply to court for a ‘blocking’ order requiring Internet Service Providers (ISPs) such as BT, EE, Sky, TalkTalk and Virgin Media to block the infringing website.

In a recent case where counterfeit goods were being sold from a website, a blocking order was granted to stop trade mark infringement. The court gave a useful summary of when such an order will be granted, setting out four ‘threshold’ conditions:

  • The ISPs must be ‘intermediaries’ under the appropriate European law
  • The user and/or operator of the relevant website must be infringing a trade mark
  • The user and/or operator of the target website must be using the ISP’s service to infringe the trade mark (just accessing it using the ISPs service is enough)
  • The ISPs must know of the infringement (for example, because the trade mark owner has written to notify them of it)

The order must also be proportionate in the circumstances, taking into account:

  • Whether it would seriously discourage users from accessing the website
  • Whether it would discourage others from infringing the trade mark in the future
  • The difficulty and cost of complying
  • Whether the order would affect legitimate ISP users
  • The comparative importance of the rights of the trade mark owner, ISP and ISP users
  • The availability of alternatives to an order, and whether they are likely to be effective
  • Whether there are safeguards against abuse (ie the order can be varied, and expires when appropriate)

The court was not satisfied by alternatives to a blocking order, such as taking legal action against the infringers, de-indexing an infringing website from search engines or seeking an order against the businesses whose servers host the website.

Operative date

  • Now

Recommendations

  • Trade mark owners whose rights are being infringed on third party websites should consider applying for an order against relevant Internet Service Providers to block the infringing website

Case ref: Cartier v BT ([2016] EWHC 339

Disclaimer: This article from Atom Content Marketing is for general guidance only, for businesses in the United Kingdom governed by the laws of England. Atom Content Marketing, expert contributors and ICAEW (as distributor) disclaim all liability for any errors or omissions.

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