In the recent case of Cartier, Montblanc and Richemont v BSkyB, BT, TalkTalk, EE and Virgin  EWHC 3354 (Ch), Justice Arnold handed down a landmark judgment paving the way for trade mark owners to obtain blocking orders requiring Internet Service Providers (“ISPs”) to block access to websites selling counterfeit goods. Blocking orders have previously been granted against ISPs in relation to infringement of copyright works pursuant to section 97A(1) of the Copyright, Designs and Patents Act 1988, but this is the first case in Europe in respect of trade marks.
Mr Justice Arnold reasoned that ISPs play an essential role in the infringement of trade marks, as it is via those ISPs that the counterfeit goods are offered for sale, and once an ISP becomes aware that its services are being used to facilitate such infringement, it has a duty to take proportionate measures to prevent or reduce such infringement. He stated that in the circumstances, no alternative remedy would be as effective as a blocking order, use of which has proved successful in reducing the operation of websites in the UK in the context of copyright infringement.
The judgment is beneficial to trade mark owners, and is in the public interest. There is however a risk that ISPs will now be inundated with applications for blocking orders and the effectiveness of the remedy will be severely restricted if the owners of infringing websites change their IP address, or register an alternative domain name.
If you would like to discuss this further or find out more about how the Commercial & Technology team can help your business please contact Sarah Williamson on 0118 952 7247 or email [email protected].
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