For the first time in Europe, a judge ordered Internet Service Providers (ISPs) to block several sites infringing trademark rights. In the European Union, it was previously only feasible to block sites under copyright provisions, or for disruption of public order in other fields such as child pornography. Henceforth, following the initiative of the English judge, it appears that trademark law allows for the possibility to seek an order from a Court to block trademark infringing websites.
The dispute arose between several companies in the luxury sector, including Cartier, Montblanc and Richemont, and five major Internet service providers. These companies filed suit further to trademark infringing acts in order to block access to six sites where counterfeit goods were offered and sold. The Court found that infringement did occur and as a result, the major English ISPs namely BSkyB, BT, TalkTalk and Virgin EE were forced to block access to those sites that illegally reproduced the trademarks of these companies in the luxury industry.
This order of October 17, 2014 was made pursuant to section 97A of the Copyright Act, but the High Court of Justice pointed out that there is no legal equivalent in terms of trademarks. The Judge relied on many recent injunctions cases on copyright law in respect of streaming or downloading sites. This Article, when applied to trademark law, imposes three conditions to allow blocking: Firstly, the ISPs must be technical intermediaries; secondly the trademark infringement should be characterised and thirdly, the intermediaries must be informed of the infringement. In addition, the Order has been rendered in interpreting Article 11 of the Directive on the enforcement of intellectual property rights which is not limited solely to copyright infringements but to all intellectual property rights. Accordingly, the Judge held that the English High Court of Justice had jurisdiction to order an ISP to block one or more sites infringing trademark law.
The Court also expressed its reservations concerning the implementation of site blocking measures by the ISPs to prevent abuse. The latter may ask the judge to annul the order in the event of a change in circumstances. The Court referred in particular to the effectiveness of blocking measures and the costs they might entail. Moreover, blocking measures should not last any longer than necessary, which remains somewhat vague. However, the Court also incorporated a “sunset clause” in this type of order so as to prevent trademark owners from targeting too many sites incessantly. According to this clause, the order shall cease at the end of a defined period, unless ISPs agree to the order being continued or the Court orders that the measures should be continued. This Order marks an inaugural step for trademark law in Europe, will it pave the way for others to follow suit?
 High Court of Justice of London, Cartier, Montblanc, Richemont c/ BSkyB, BT, TalkTalk, EE and Virgin, October 17, 2014.