Cartier International AG & Ors v British Sky Broadcasting Ltd & Ors

The High Court has jurisdiction to grant a website-blocking injunction against an internet service provider whose services are used by third parties to infringe trade marks, even where the provider is not itself an infringer. The jurisdiction arises under the court’s equitable powers, confirmed by section 37(1) of the Senior Courts Act 1981, and is reinforced by a conforming interpretation required by Article 11 of the Enforcement Directive.

The court must be satisfied that the provider is an intermediary, that trade-mark infringement is occurring through its services, and that it has actual knowledge. The injunction must be effective, dissuasive, proportionate, fair and equitable, sufficiently targeted, and subject to safeguards against abuse.

The claimants, owners of the Cartier, Montblanc and IWC trade marks, sought orders requiring five major UK internet service providers to block access to six websites selling counterfeit goods. The providers did not themselves infringe the marks and did not dispute that the website operators were infringing.

The principal issues were whether the High Court had jurisdiction to grant the orders; what threshold conditions applied; whether those conditions were satisfied; what legal principles governed the exercise of the jurisdiction; and whether the proposed orders were proportionate.

1. Jurisdiction. The High Court’s power to grant injunctions derives from the pre-existing equitable jurisdiction of the Chancery courts and is confirmed, but not created, by section 37(1) of the Senior Courts Act 1981. The jurisdiction is not confined to established categories of injunction. Section 37(1) could therefore support a website-blocking injunction against an intermediary which was not itself an infringer.
2. Alternatively, section 37(1) had to be interpreted, under the Marleasing principle, consistently with the third sentence of Article 11 of the Enforcement Directive. The orders were sufficiently accessible and foreseeable to be “provided for by law”.
3. Threshold conditions. The ISPs were intermediaries. The Target Websites infringed the claimants’ marks by advertising, offering and selling counterfeit goods directed at UK consumers. The operators used the ISPs’ services because the ISPs enabled the relevant communications to reach their subscribers. Actual purchases, a contractual relationship between the operators and ISPs, and proof that particular subscribers had accessed the websites were unnecessary. The ISPs had actual knowledge through the claimants’ notices and evidence.
4. Applicable principles. The court had to ensure that the remedy was necessary in the sense of being required as part of the available enforcement framework, effective, dissuasive, not unnecessarily complicated or costly, free from unjustified barriers to legitimate trade, fair and equitable, proportionate, and protected by safeguards against abuse. Effectiveness concerned the impact on access through the defendant ISP, not whether overall infringement would fall across the internet. The measures should at least make access difficult and seriously discourage users.
5. Proportionality. The court considered the relative importance of the trade-mark rights, alternative measures, efficacy, implementation costs, dissuasiveness, impact on lawful users and substitutability. The Target Websites could be blocked in a sufficiently targeted way, and the likely benefits justified the anticipated burden on the ISPs. The orders struck a fair balance between the claimants’ rights, the ISPs’ freedom to conduct business and users’ freedom of information.
6. Safeguards and order. Orders were made substantially in the form sought, subject to express rights for affected subscribers to apply to vary or discharge them, enhanced information on the blocking page, and a sunset clause. The precise wording and duration were left for further argument.

First-instance decision. No prior appellate decision in the same proceedings was stated.