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Wednesday, 24 February 2016

Blocking injunctions may be granted without need for claimant to demonstrate efficacy and dissuasiveness

Inside the box:
better a ring
or a blocking injunction?
Blocking injunctions in trade mark cases? Since the landmark 2014 decision of Arnold J in Cartier [here, here, here] (currently under appeal: the appeal will be heard on 13 April) it appears that indeed this type of measure is also available to trade mark owners.

IPKat readers will remember that the reason why this was uncertain is because - unlike what happened in relation to Article 8(3) of the  InfoSoc Directive (transposed into UK law through the adoption of s97A of the Copyright Designs and Patents Act 1988 (CDPA)) - UK Government did not take any measures to transpose explicitly the third sentence of Article 11 of the Enforcement Directive into its own legal system.

This provision states that: "Member States shall also ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe an intellectual property right, without prejudice to Article 8(3) of [the InfoSoc] Directive"

As Arnold J explained at length in Cartier, at the time of transposing the Enforcement Directive into UK law, UK Government believed that no action was needed in respect of the third sentence in Article 11 because s37(1) of the Supreme Court Act 1981 already allowed (and still allows) “[t]he High Court ... (whether interlocutory or final) [to] grant an injunction … in all cases in which it appears to be just and convenient to do so.”

Since the Cartier judgment not much has happened in the area of trade marks and blocking injunctions ... at least until yesterday, when HHJ Hacon (sitting as a High Court judge) issued his judgment in Cartier and Another v BSkyB and Others [2016] EWHC 339 (Ch) (Cartier II).

This was another application for a website blocking in which the claimants and defendants were the same as those in Cartier (or Cartier I), ie - respectively - owners of registered trade marks (CARTIER for watches and MONTBLANC for pens) and five major access providers in the UK.


Cattier
Besides the vintage touch of referring to 'Community law' in lieu of 'EU law', HHJ Hacon deemed it correct to apply the principles set in Cartier I, despite the fact that that case - as mentioned above - is currently pending in appeal.

In Cartier I Arnold J took the view that in the context of a website-blocking application the exercise of the court's jurisdiction under s37(1) of the Supreme Court Act 1981 must be in accordance with Articles 3 and 11 of the Enforcement Directive and Article 12 to 15 of the Ecommerce Directive. These gave rise to four threshold requirements which have to be satisfied before turning to the court's discretion in the usual sense, ie:
    (1) The ISPs must be intermediaries within the meaning of the third sentence of Article 11.
    (2) The users and/or the operators of the website must be infringing the claimant's trade mark(s).
    (3) The users and/or the operators of the website must use the ISPs' services to infringe.
    (4) The ISPs must have actual knowledge of infringing activity. This means actual knowledge of one or more persons (who need not be identified) using the ISPs' services to infringe trade mark(s). It need not extend to knowledge of a specific infringement of a specific trade mark by a specific individual. An ISP may be given actual knowledge of infringing activity by receipt of sufficiently detailed notice of the activity and having had a reasonable opportunity to investigate the position.
If such threshold conditions are satisfied, then there are further requirements to be taken into account when considering whether to grant the injunction sought,including its efficacy, likelihood to dissuade, being not necessarily complicated or costly, being such as to avoid posing barriers to legitimate trade, proportionate, and being such as to contain safeguards against abuse.

HHJ Hacon deemed that all conditions above were met in the present case and granted the injunction sought by the claimants.

Among other things, the judge confirmed that (para 64) "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."

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