Cartier International AG v British Sky Broadcasting
| Jurisdiction | England & Wales |
| Judge | Mr Justice Arnold,The Hon Mr Justice Arnold |
| Judgment Date | 17 October 2014 |
| Neutral Citation | [2014] EWHC 3354 (Ch) |
| Docket Number | Case No: HC14C01382 |
| Court | Chancery Division |
| Date | 17 October 2014 |
and
[2014] EWHC 3354 (Ch)
The Hon Mr Justice Arnold
Case No: HC14C01382
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Rolls Building
Fetter Lane, London, EC4A 1NL
Adrian Speck QC and Benet Brandreth (instructed by Wiggin LLP) for the Claimants
Charlotte May QC and Jaani Riordan (instructed by Reed Smith LLP) for the Defendants
David Allen Green of Preiskel & Co LLP made written submissions on behalf of the Intervener
Hearing dates: 25–26 September 2014
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
Contents
| Topic | Paragraphs |
| Introduction | 1–7 |
| Evidence | 8–11 |
| Factual background | 12–71 |
| The problems of counterfeit goods and online trade mark | 12–14 |
| Infringement Richemont and the Trade Marks | 15–16 |
| The Target Websites | 17–24 |
| Blocking techniques in general | 25 |
| Circumvention techniques | 26–27 |
| The Internet Watch Foundation's blocking regime | 28–29 |
| Sections 17 and 18 of the Digital Economy Act 2010 | 30–32 |
| Parental control services | 33–37 |
| The ISPs' blocking systems | 38–51 |
| Sky | 39–41 |
| BT | 42–45 |
| EE | 46–47 |
| TalkTalk | 48–49 |
| Virgin | 50–51 |
| Section 97A orders obtained to date | 52–57 |
| Implementation of the section 97A orders by the rightholders | 58–60 |
| Implementation of the section 97A orders by the ISPs | 61–65 |
| Sky | 61 |
| BT | 62 |
| EE | 63 |
| TalkTalk | 64 |
| Virgin | 65 |
| Problems encountered as a result of section 97A orders | 66–68 |
| Applications for further section 97A orders | 69–71 |
| The orders sought | 72 |
| The legal context | 73–86 |
| 74 | |
| Trade Marks Directive and CTM Regulation | 75 |
| Domestic implementation of the Trade Marks Directive | 76 |
| 77–78 | |
| Domestic implementation of the E-Commerce Directive | 79 |
| 80 | |
| Domestic implementation of the Information Society Directive | 81 |
| The Enforcement Directive | 82–83 |
| Domestic implementation of the Enforcement Directive | 84 |
| The Charter of Fundamental Rights of the European Union | 85–86 |
| Relevant principles of interpretation | 87–91 |
| EU directives do not have horizontal effect | 88 |
| Interpretation of domestic legislation in the context of EU directives | 89 |
| Interpretation of EU directives | 90–91 |
| Jurisdiction | 92–138 |
| The issue | 92–93 |
| Domestic interpretation of section 37(1) | 94–111 |
| Implementation of Article 8(3) of the Information Society Directive and Article 11 of the Enforcement Directive | 112–120 |
| Interpretation of section 37(1) in accordance with the third sentence | 121–132 |
| of Article | 11 |
| Provided for by law? | 133–138 |
| Threshold conditions for the exercise of the jurisdiction | 139–141 |
| Are the threshold conditions satisfied in the present case? | 142–157 |
| Are the ISPs intermediaries? | 142 |
| Are the operators of the Target Websites infringing the Trade Marks? | 143–146 |
| Do the operators of the Target Websites use the ISPs' services to infringe? | 147–156 |
| Do the ISPs have actual knowledge of this? | 157 |
| Principles to be applied | 158–191 |
| Necessary | 160–162 |
| Effective | 163–176 |
| Dissuasive | 177–179 |
| Not unnecessarily complicated or costly | 180–181 |
| Avoidance of barriers to legitimate trade | 182 |
| Fair and equitable and fair balance | 183 |
| Proportionate | 184–190 |
| Safeguards against abuse | 191 |
| Application to the present case | 192–261 |
| The comparative importance of the rights engaged and the justifications for interfering with those rights | 193–196 |
| Availability of alternative measures | 197–216 |
| Action against the operators | 198 |
| Notice and takedown by hosts | 199–204 |
| Payment freezing | 205–207 |
| Domain name seizure | 208–209 |
| De-indexing | 210–215 |
| Customs seizure | 216 |
| Conclusion | 217 |
| Efficacy | 218–237 |
| The section 97A orders | 220–236 |
| The present case | 237 |
| Dissuasiveness | 238 |
| Costs | 239–253 |
| Impact on lawful users | 254–257 |
| Substitutability | 258–259 |
| Overall assessment of proportionality | 260–261 |
| Safeguards against abuse | 262–265 |
| Overall conclusion | 266 |
Introduction
The Claimants ( collectively, "Richemont") are the owners of a large number of United Kingdom Registered Trade Marks for CARTIER, MONTBLANC, IWC and other brands ("the Trade Marks"). The Defendants ("Sky", "BT", "EE", "TalkTalk" and "Virgin", collectively "the ISPs") are the five main retail internet service providers in the United Kingdom. Between them, they have a market share of some 95% of UK broadband users. By this application Richemont seek orders requiring the ISPs to block, or at least impede, access by their respective subscribers to six websites which advertise and sell counterfeit goods ("the Target Websites"). Richemont contend that the operators of the Target Websites thereby infringe the Trade Marks. For the avoidance of doubt, there is no suggestion that the ISPs have infringed the Trade Marks or are liable for infringements by the operators of the Target Websites.
The application raises five main questions. First, does this Court have jurisdiction to make an order of the kind sought? Secondly, if the Court has jurisdiction, what are the threshold conditions, if any, which must be satisfied if the Court is to make an order? Thirdly, are those conditions satisfied in the present case? Fourthly, if those conditions are satisfied, what are the principles to be applied in deciding whether or not to make such an order? Fifthly, applying those principles, should such orders be made in the present case?
Over the last three years, a series of orders have been made requiring the ISPs to block, or at least impede, access to websites pursuant to section 97A of the Copyright, Designs and Patents Act 1988 ("the 1988 Act"), which implements Article 8(3) of European Parliament and Council Directive 2001/29/EC of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society ("the Information Society Directive"). I have considered the principles to be applied to applications of that kind in a series of judgments: Twentieth Century Fox Film Corp v British Telecommunications plc [2011] EWHC 1981 (Ch), [2012] Bus LR 1471 (" 20C Fox v BT"); Twentieth Century Fox Film Corp v British Telecommunications plc (No 2) [2011] EWHC 2714 (Ch), [2012] Bus LR 1525 (" 20C Fox v BT (No 2)"); Dramatico Entertainment Ltd v British Sky Broadcasting Ltd [2012] EWHC 268 (Ch), [2012] 3 CMLR 14 (" Dramatico v Sky"); Dramatico Entertainment Ltd v British Sky Broadcasting Ltd (No 2) [2012] EWHC 1152 (Ch), [2012] 3 CMLR 15 (" Dramatico v Sky (No 2)"); EMI Records Ltd v British Sky Broadcasting Ltd [2013] EWHC 379 (Ch), [2013] ECDR 8 (" EMI v Sky"); Football Association Premier League Ltd v British Sky Broadcasting Ltd [2013] EWHC 2058 (Ch), [2013] ECDR 14 (" FAPL v Sky"); and Paramount Home Entertainment International Ltd v British Sky Broadcasting Ltd [2013] EWHC 3479 (Ch), [2014] ECDR 7 (" Paramount v Sky"). Since the last of those judgments, Henderson J has considered the impact of the judgment of the Court of Justice of the European Union in Case C-466/12 Svensson v Retriever Sverige AB [EU: C:2014:76] in Paramount Home Entertainment International Ltd v British Sky Broadcasting Ltd [2014] EWHC 937 (Ch) (" Paramount v Sky 2").
It is convenient to note at this stage three points about the cases under section 97A. The first is that neither the ISPs nor the rightholders have appealed against any aspect of the orders made in those cases, including those aspects which deal with the costs of the applications and the costs of implementing the orders. The second is that, since 20C Fox v BT and 20C Fox v BT (No 2), the ISPs have not opposed the making of the orders sought by the rightholders, but have restricted themselves to negotiating the wording of the orders if the Court is minded to grant them. Thirdly, in consequence, most of the orders have been granted after consideration of the applications on paper.
The present application raises different considerations, for two main, linked reasons. The first is that the present case involves an attempt to combat trade mark infringement rather than copyright infringement. The second is that there is no statutory counterpart in the field of trade marks to section 97A of the 1988 Act. In addition, the arguments raised on the present application have differed to some extent from those raised in 20C Fox v BT. For all these reasons, I have endeavoured to approach this application afresh. Inevitably, however, much of what was said in the judgments listed in paragraph 3 above is relevant. In addition, the experience that has been gained as a result of the orders granted in those cases is also relevant, as I shall explain.
I was informed by counsel that, so far as they and their professional and lay clients are aware, this is the first occasion on which an application for a website-blocking order against internet service providers in order to combat trade mark infringement has been made anywhere in the European Union, with the possible exception of the Danish case of Home A/S v Telenor A/S (Retten på Frederiksberg, 14 December 2012). It is a test case, which, if successful, is likely to be followed by other applications by Richemont...
To continue reading
Request your trial
-
Sony Music Entertainment (Irl) Ltd v UPC Communications Irl Ltd (No 2)
... ... 22 I was also referred to Cartier International AG & Ors v British Sky Broadcasting Ltd & Ors [2014] EWHC ... ...
-
Google Inc. v. Equustek Solutions Inc., 2017 SCC 34
...Guaranty Trust Co. of New York v. Hannay & Co., [1915] 2 K.B. 536; Cartier International AG v. British Sky Broadcasting Ltd., [2014] EWHC 3354 (Ch.), [2015] 1 All E.R. 949; Mercedes Benz A.G. v. Leiduck, [1996] 1 A.C. 284; John Deere Ltd. v. Firdale Farms Ltd. (1987), 45 D.L.R. (4th) 64......
-
Lifestyle Equities C.v v. Amazon UK Services Ltd
...an order preventing the fulfilment of orders from customers within the jurisdiction.” Mr Edenborough QC also referred to Cartier v BskyB [2015] ETMR 1 at [144] to [146] but in those paragraphs, Arnold J (as he then was) only cited Blomqvist in passing without any analysis of its 144 After t......
-
Anan Kasei Company Ltd v Neo Chemicals & Oxides (Europe) Ltd
...possible at infringing content and minimise interference with lawful content so as to avoid “overblocking”: see e.g. Cartier International AG v British Sky Broadcasting Ltd [2014] EWHC 3354 (Ch), [2015] Bus LR 298 at [182] and [254]–[257] affd. [2016] EWCA Civ 658, [2017] Bus LR 1. In t......
-
Site Blocking Orders Come To Canada: GoldTV.biz
...also, Sookman Site Blocking. See, Cartier International AG & Ors v British Sky Broadcasting Ltd & Ors [2014] EWHC 3354 (Ch) (17 October 2014), aff'd Cartier CA, aff'd Cartier UKSC. See other authorities in Sookman Site To view original article, please click here. The content of this......
-
Meeting Halfway: The Increasing Role Of Intermediaries In Protecting UK Intellectual Property Rights Online
...v eBay International AG (Case C-324/09) ("eBay")). In October 2014, the UK High Court in Cartier v British Sky Broadcasting Limited [2014] EWHC 3354 (Ch) ("Cartier")following eBay held that whilst article 11 was not specifically implemented by the UK Parliament in relation to other IP right......
-
Blocking Order Relief For Intellectual Property Rights Holders
...Corporation v Sky UK Limited & Ors [2015] EWHC 1082 (Ch) 7. Cartier International AG & Ors v British Telecommunications Plc & Anr [2014] EWHC 3354 (Ch); [2016] EWCA Civ 658; [2018] UKSC 8. Matchroom Boxing Limited & Anr v British Telecommunications PLC & Ors [2020] EWHC 2868 (Ch). 9. Ninten......
-
Blocking Order Relief For Intellectual Property Rights Holders
...Corporation v Sky UK Limited & Ors [2015] EWHC 1082 (Ch) 7. Cartier International AG & Ors v British Telecommunications Plc & Anr [2014] EWHC 3354 (Ch); [2016] EWCA Civ 658; [2018] UKSC 8. Matchroom Boxing Limited & Anr v British Telecommunications PLC & Ors [2020] EWHC 2868 (Ch). 9. Ninten......
-
Search Orders - Anton Piller Injunctions
...at para 10. See also Upmann v Elkan , (1871) LR 12 Eq 140. 182 Reported in Cartier International AG v British Sky Broadcasting Ltd , [2014] EWHC 3354 (Ch). 183 Reported in Cartier International AG v British Sky Broadcasting Ltd , [2016] EWCA Civ 658. 184 Google Inc v Equustek Solutions Inc ......
-
Table of cases
...26 SCR 430 ........................................................ 552 Cartier International AG v British Sky Broadcasting Ltd, [2014] EWHC 3354 (Ch) ............................................................................ 255 Cartier International AG v British Sky Broadcasting Ltd, [2......