February 23, 2016

His Honour Judge Hacon has today handed down judgment in a claim for an order that the main ISPs in the UK should block access to five websites selling counterfeit goods. The Claimants were Cartier International Limited and Montblanc-Simplo GmbH, and the Defendants were BT, EE, Sky, TalkTalk and Virgin Media.

The judgment follows Arnold J’s landmark ruling in October 2014 which found jurisdiction for a site blocking order to combat counterfeiting i.e. trade mark infringement. Prior to this, only pirate (i.e. copyright infringing sites) had been blocked in the UK.

For more information on the background to the legislation behind site blocking in the UK see here.

For more information on Arnold J’s founding judgment at the application of the same Claimants (“Cartier I”) see here.

In this judgment, HHJ Hacon reviewed Arnold J’s findings on jurisdiction and went on to discuss considerations of proportionality and  the court’s discretion to make the order that had been raised in a note from the ISPs.  The Judge concluded:

• The Claimants had shown that the target websites could be accessed using the services of each Defendant. They had done so by giving evidence of use of each ISP service (other than for EE where the inference was that EE’s service could also be used to access the sites concerned).
• The ISPs had actual knowledge that the operators of the target websites had used their services to infringe the Claimants’ trade marks, by virtue of the Claimants’ unchallenged evidence that the sites could be accessed using the ISPs’ services and evidence of test purchases made from the sites.
• Site blocking applications are “not completely analogous” to Norwich Pharmacal applications in particular with regard to notification to the websites themselves. The Judge held that it was not necessary to notify the website operators of the application. The ISPs had been notified and could call evidence from the operators of the target websites.  The order provides a safeguard mechanism for parties to apply to court if they wished to contend that the order was wrongly granted.
• Some of the sites blocked did not have a UK Alexa rank, but the Claimants’ case was these sites were still visible – in the sense that they were likely to be found by someone searching for what the site had to offer. HHJ Hacon noted that the implied criticism from the ISPs was to the effect that the importance of trade mark rights for the non-Alexa sites was minimal.  The judge reviewed the assessment of visibility undertaken by Incopro’s Talisman system and noted that “public knowledge of the widespread availability of fake products…itself is liable to damage the Trade Marks’ function”.
• In terms of alternative enforcement options, the Judge referred to “the difficulty in trying to take action against the primary wrongdoers, that is to say the operators of the Target Websites” and held that he had “no doubt that lack of progress against the operators does not affect the proportionality of the injunction sought”.
• With regards to efficacy and dissuasiveness, HHJ Hacon referred to Cartier I, stating that “although the presence of alternative websites may in certain circumstances have a limited bearing on proportionality, there is no requirement for the claimant to show that blocking access to the target websites in issue is likely to reduce the overall infringement of his trade marks”.
• On costs, the Judge had regard to the fact that the ISPs did not themselves assert that the costs of the order sought combined with the order in Cartier I made the order disproportionate.

The points addressed by HHJ Hacon in this judgment are useful in further clarifying the evidential requirements in site blocking applications in the context of websites selling counterfeit goods in infringement of trade mark rights.

It should be noted, as it was by HHJ Hacon several times, that Cartier I is currently on appeal, due to be heard in mid-April.  The Claimants accepted that leave to appeal should also be given in this case.

It is hoped that this further judgment will assist the court when deciding the appeal, which in turn may have a bearing on the European Commission’s review of the Enforcement Directive, and future EU legislation.

Wiggin LLP acted for the Claimants in this case.