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Chloe Fernandez
Chloe Fernandez,
PARALEGAL
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The Cartier case and ISP blocking orders
15 July 2015

What is a blocking order?

A blocking order is an order to an ISP to block certain websites from the internet. This is a method used to stop infringers taking down one website and immediately setting up another website under a different domain name or a different IP address. Rightsholders can update the ISP with new domain names and IP addresses for the relevant website. As this is burdensome for the ISP, blocking orders will only be granted where there are no other viable options available to the rightsholder.

The case

The case of Cartier, Montblanc and Richemont v BSkyB, BT, TalkTalk, EE and Virgin (Open Rights Group intervening) [2014] EWHC 3354 (Ch) was a test case brought by Richemont and two of its sub brands, Cartier and Montblanc, against BSkyB, BT, EE, TalkTalk and Virgin Media to see whether a blocking order could be obtained in relation to counterfeit trade mark goods. Rightsholders are already able to apply for a blocking order in relation to websites selling counterfeit copyright materials. Late in 2014, the High Court granted Richemont the blocking orders it requested.

Having decided that the High Court has the jurisdiction to grant such an order in relation to websites selling counterfeit trade mark goods, Mr Justice Arnold turned to the conditions that rightsholders must satisfy for the court to grant a blocking order. Based on the case of Twentieth Century Fox Film Corp v British Telecommunications plc [2011] EWHC 1981 (Ch) Mr Justice Arnold set out four conditions. First, that the defendant is a service provider. Secondly, that users and/or the operator of the website in question infringe the claimant's copyrights. Thirdly, that users and/or the operator of the website use the defendant's services to do that. Fourthly, that the defendant has actual knowledge of this.

Further, Mr Justice Arnold also stated that rightholders must satisfy the following conditions whilst taking into account the facts of each case:

  1. The blocking order must be necessary

  2. The blocking order must be effective

  3. The blocking order must be dissuasive

  4. The blocking order must not be unnecessarily complicated or costly

  5. The blocking order must avoid barriers to legitimate trade

  6. The blocking order must be fair and equitable and strike a fair balance between the applicable fundamental rights and

  7. The blocking order must be proportionate

Mr Justice Arnold concluded that a blocking order is the only measure where the rightsholder has the ability to update the orders to include additional related websites and thereby avoid attempts by the operators of the target websites to circumvent the orders. This was not only more effective in the long run but also less burdensome than the other options available to Richemont in this case. However, blocking orders are only available where the websites are wholly engaged in infringing activity and a blocking order will usually have a term of two years.

Conclusion

In conclusion, although the blocking order is a useful method of tackling websites selling counterfeit trade mark goods, it will only be granted where there are no other viable options available to the rightsholder. The other options that rightsholders should consider include (i) infringement proceedings against the website operators, (ii) take down notices to the hosts of the websites, (iii) payment freeze requests to payment processors such as Visa and Mastercard, (iv) domain name seizure through UDRP procedure, (v) requests to search engine providers to de-index the websites and (vi) registering trade marks at Customs for seizure of any counterfeit products entering the UK.

For more information on anything in this article or to find out more about what the Brand Guardianship Team can offer please contact Chloe Fernandez on 0118 952 7112 or email cfernandez@boyesturner.com.

Consistent with our policy when giving comment and advice on a non-specific basis, we cannot assume legal responsibility for the accuracy of any particular statement. In the case of specific problems we recommend that professional advice be sought.

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