The UK Court of Appeal has held that trademark holders may be granted site-blocking injunctions against internet service providers (“ISPs”). A noteworthy win in the fight against counterfeits, the ruling comes on the heels of Cartier, Alaia, and Net-a-Porter’s parent company, Richemont, filing suit against five different ISPs, BT, Sky, TalkTalk, EE and Virgin Media, after they refused direct requests to block access to websites found to be selling counterfeit goods without a court order.
In upholding the landmark decision that was handed down in 2014, the Court of Appeal also told the ISPs that they must bear the costs for implementing the order. The High Court previously held that the UK’s failure to expand the power to order blocking injunctions beyond copyright was not a reason to remove the ability from cases of trademark infringement, particularly as EU legislation decreed it as lawful.
Siding with the High Court, the Court of Appeal held on Wednesday: “[European law] does indeed provide a principled basis for extending the practice of the court in relation to the grant of injunctions to encompass, where appropriate, the services of an intermediary, such as one of the ISPs, which have been used by a third party to infringe a registered trademark. There is no dispute that the ISPs are intermediaries […] This court must now recognize pursuant to general equitable principles that this is one of those new categories of case in which the court may grant an injunction when it is satisfied that it is just and convenient to do so.”
The court further stated in its decision: “Had the decision been taken after the strings of Brexit had been untangled, we would likely have needed new statutory legislation in the UK in order for brand owners to benefit from blocking injunctions. The court decided that ISPs have no common law duty of care to take these steps but it was prepared to give effect to the intentions of EU law. As a result, should brand owners notify ISPs of a suspect website, there is a positive obligation on that ISP to block access to the site.”
The case is Cartier, Montblanc and Richemont v BSkyB, BT, TalkTalk, EE and Virgin  EWHC 3354 (Ch).