Cartier and the other claimants sought an injunction against the five major internet service providers (ISPs) in the UK requiring them to block access to websites. These sites were being used by their operators to infringe claimants’ trademark rights by marketing counterfeit goods.
The High Court held that it had jurisdiction to grant website-blocking injunctions against ISPs in cases involving trademark infringement. Furthermore, the court held that it was proportionate to make such an order on the grounds that the relief was justified and would strike a fair balance between Cartier's trademark rights, the ISPs’ right to freedom to carry on business, as well as internet users’ rights to freedom to receive information.
Facts: The ISPs contested the High Court's jurisdiction to grant blocking orders in cases involving trademark infringement. The defendants argued that whereas the UK had implemented the relevant provision of EU law (article 8(3) of the Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society, known as the Information Society Directive), which enabled courts to grant such orders in relation to cases involving copyright, it had not passed any domestic legislation to implement article 11 of the Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights, known as the Enforcement Directive, which extended that power to other intellectual rights (including trademarks).
The case has wide implications for ISPs. The Court of Appeal appears to be placing the gatekeeping duty on them
The defendants continued that the general discretion under Senior Courts Act (SCA)1981 s37(1) to grant injunctive relief did not confer a new power to grant an injunction where none existed previously. It was not, therefore, in general possible to obtain injunctive relief against a party that was not itself guilty of any wrongdoing (ie, the ISP).
Decision: The Court of Appeal said that the jurisdiction to impose orders on third party intermediaries such as ISPs could be found in established statute. The ISPs not only lost on the principle that these injunctions can be extended to trademark infringement, but also had to pay the costs of implementing the website-block each time. The court had no difficulty in construing SCA s37(1) - worded very broadly - in this fashion, and stated that it is duty-bound to do so by the Marleasing principle (which requires national courts, as far as possible, to interpret domestic legislation consistently with EU law) (Marleasing SA v La Comercial Internacional de Alimentación SA Case C-106 /89, CJEU; [1990] ECR I-4315 ).
Comment: In Europe, it is the first ruling of its kind by a senior court on website-blocking . The case has wide implications for ISPs. The Court of Appeal appears to be placing the gatekeeping duty on them as the intermediary for cutting the market access that the websites require in order to trade. It is possible that this paves the way for injunctions being taken out against the ISP host site rather than having to pursue the operator of the website, which is at times notoriously difficult to locate or pursue in the jurisdiction from which the company was operating. It is thought that the ruling will encourage more cases, which may help to curtail the booming market for counterfeit goods.