Cartier International Ltd & Anor v British Telecommunications Plc & Ors  EWHC 339 (Ch) (23 February 2016)
In this case an injunction for blocking access to certain websites was sought according to Article 11 of Directive 2004/48/EC. The claimants owned registered trade marks which they used for the advertising and sale of their luxury goods. The defendants were the five main internet service providers (‘ISPs’) in the United Kingdom. It was alleged that certain websites were being used by their operators to infringe the claimants’ trade marks by marketing goods under those marks, typically cheap copies of the claimants’ goods.
In order for the court to grant a website-blocking order four threshold requirements have to be satisfied: the ISPs must be intermediaries within the meaning of the third sentence of Article 11, the users and/or the operators of the website must be infringing the claimant’s trade mark(s), the users and/or the operators of the website must use the ISPs’ services to infringe and the ISPs must have actual knowledge of infringing activity.
The injunction sought should be proportionate to the objective legitimately pursued by the order of the injunction and that is to be determined by the following considerations – the comparative importance of the rights that are engaged and the justifications for interfering with those rights, the availability of alternative measures which are less onerous, the efficacy of the measures which the ISPs would be required to adopt, the costs associated with these measures, the dissuasiveness of the measures, the impact of the measures on lawful users of the internet and the substitutability of other websites for the target websites. It was concluded that the claimants’ application complied with these criteria and therefore the order was granted.
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