Cartier International Ltd & Anor v British Telecommunications Plc & Ors

The court has jurisdiction to grant a website-blocking injunction against an internet service provider which is not itself infringing a trade mark. The jurisdiction derives from the court’s general injunctive power and must be exercised consistently with the Enforcement Directive and the E-Commerce Directive.

The applicant must establish four threshold conditions: intermediary status, infringement by website operators or users, use of the ISP’s services for that infringement, and the ISP’s actual knowledge of infringing activity. The court must then assess proportionality, including efficacy, dissuasiveness, cost, lawful users, alternative measures, substitutability and safeguards against abuse.

The claimants, owners of CARTIER and MONTBLANC trade marks, sought final website-blocking injunctions against five major United Kingdom internet service providers. The target websites allegedly marketed counterfeit goods bearing signs identical to the claimants’ registered marks.

The defendants took a neutral stance but raised issues concerning jurisdiction, proof that their services had been used for infringement, actual knowledge, full and frank disclosure, and proportionality. The application was made without substantive infringement proceedings against the website operators. The central issue was whether the criteria established in Cartier International AG v British Sky Broadcasting Limited [2014] EWHC 3354 (Ch) could be applied to the evidence in this case.

1. Jurisdiction. The court had jurisdiction to grant the injunction. The general power to grant injunctions against a defendant over whom the court has jurisdiction is now confirmed by section 37(1) of the Senior Courts Act 1981. The equitable principles governing its exercise are sufficiently flexible to protect trade mark rights by blocking access to infringing websites.

2. Threshold conditions. The defendants were intermediaries. The evidence established that the target websites infringed the claimants’ marks and that the defendants’ broadband services could be used to access them. Actual knowledge was established for the defendants other than EE by evidence of actual access and test purchases. In relation to EE, the inference of access, together with notice and a reasonable opportunity to investigate, was sufficient actual notice. The approach in Twentieth Century Fox Film Corp. v British Telecommunications plc [2011] EWHC 1981 (Ch) was applied.

3. Disclosure. A website-blocking application was not equivalent to a Norwich Pharmacal application. It was not an ex parte application without notice, and the defendants had been served with the evidence and could challenge it. The unchallenged evidence was sufficient to establish infringement.

4. Proportionality. The court applied the principles in Cartier I. The relevant considerations included the importance of the rights engaged, less onerous alternatives, efficacy, implementation costs, dissuasiveness, the impact on lawful users and the availability of substitute websites. There was no requirement to prove that blocking the target websites would reduce the overall level of trade mark infringement.

5. The claimants had reasonably pursued alternative measures, including action against website operators, de-indexing, host intervention, domain-name seizure and payment-service intervention. Those measures were unlikely to provide an effective solution. Shared IP addresses could be addressed through DNS blocking where legitimate websites used the same address, with IP blocking where appropriate.

6. The application satisfied the applicable criteria. The court would hear submissions on the precise form of the order and indicated that permission to appeal would be granted unless the defendants wished otherwise.

The judgment records that the principles in Cartier International AG v British Sky Broadcasting Limited [2014] EWHC 3354 (Ch) were under appeal, with that appeal expected to be heard by the Court of Appeal. This judgment was a first-instance determination applying those principles.