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Brand owners rejoice: Court of Appeal upholds Cartier decision

7 July 2016

The Court of Appeal (CA) yesterday dismissed the appeal by a number of well-known ISPs against a 2014 decision requiring them to block access to websites offering counterfeit goods, finding in favour of the luxury brands company, Richemont.

The appellants – Virgin, Talk Talk, EE, BT and Sky – argued that ISPs are innocent of any wrongdoing in these situations and should not be forced to impose blocking orders. They argued that nothing in the Trade Marks Act 1994 imposes a duty on an innocent party to prevent third party infringement and that the right to an injunction against intermediaries contained in the EU Enforcement Directive has not been transposed into English law.

Whilst this is true, (by contrast, the Copyright Designs and Patents Act 1988 was amended to implement the InfoSoc Directive by introducing section 97A permitting injunctions against intermediaries in respect of copyright infringement) the CA agreed with Arnold J that the High Court’s broad jurisdiction under s31(1) Senior Courts Act 1981 to grant an injunction in all cases in which it appears to be just and convenient to do so should be applied here and that a trade mark owner should be entitled to obtain an injunction against an ISP in appropriate cases where a trade mark was being infringed on a hosted website and the ISP has actual knowledge of this (including, in this case, by the trade mark’s application to counterfeit goods sold via the website and the use of the trade mark in the website domain name).

This decision will be welcome news to brand owners. Whilst any application for an injunction will always need to meet strict criteria (including being necessary, dissuasive, not unnecessarily complicated or costly and being proportionate), yesterday’s decision reaffirms the place of website blocking injunctions in a trade mark owners’ armoury in the longstanding war against online counterfeiters.

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