|Inside the box: |
better a ring
or a blocking injunction?
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  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.
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.