The key takeaways for brands from the supreme court’s Cartier decision
The Cartier decision in the Supreme Court overturned rulings from the lower courts and has determined that the costs of implementing a website blocking order obtained from the Courts have to be paid by Trade Mark owners.
We have outlined the key takeways from this decision, as well as earlier decisions from the High Court (October 2014) and Court of Appeal (July 2016), the impact it will have moving forward and how Incopro can assist.
- The Courts in the UK can order Internet Service Providers (ISP) to block subscriber access to websites that sell counterfeit goods. When an order is made, the ISP is required to instruct its systems to refuse requests from consumers wishing to visit a blocked website.
- Courts in Europe that have implemented the Enforcement Directive have similar powers – Article 11 of the Enforcement Directive (which lays down detailed provisions for the protection of intellectual property in Europe) provides that Member States should provide an ability for right holders to secure injunctions against intermediaries where the services of those intermediaries are used by a third party to infringe an intellectual property right;
- When websites are blocked by ISPs in a jurisdiction, this can deliver a very meaningful reduction in traffic to the site in question. In the Cartier case, the High Court accepted evidence from Incopro that traffic to blocked websites can decrease by over 70% in a relatively short period (High Court para 227-229);
- To obtain a blocking order, the Trade Mark owner must incur legal costs because the owner must establish an entitlement to an injunction in Court. The costs of obtaining such a blocking order have decreased over time, but it is still the case that blocking orders will likely be used relatively sparingly. They can however be a very effective way of stopping harm because the orders can keep pace with the site as it moves from server to server and even where it changes website name or domain name. The ability to keep a website blocked no matter where it moves is a key strategic reason why site blocking is a powerful enforcement option;
- When a site blocking order is made in the UK to protect Trade Marks, the costs of implementing the block by the ISP are required to be paid by the Trade Mark owner – these costs should be relatively small as they only relate to the costs that the ISP incurs in instructing its systems to block a site. This process is capable of automation and, in any event, is relatively straight forward. The costs provisions applicable to copyright are likely to be different;
- Blocking orders implemented in Europe can have different cost requirements in accordance with the national law in each Member State – many will expect costs to be borne by the ISP (as was the case in France).
- In the UK, Internet Service Providers cannot recover the costs that they incur in acquiring and upgrading website blocking systems;
- In the UK, the owner of the Trade Marks protected by the blocking order must give an indemnity to the ISPs in case they suffer damage by over-blocking – i.e. in case a website is notified for blocking in error.
Putting this shortly, blocking orders in respect of Trade Mark infringement are available and can be highly effective because they can move and adapt to keep pace with website moves. When deciding whether to seek a block, the Trade Mark owner will need to weigh up the harm being caused by the website and the costs to be incurred in securing and maintaining the block.
How can Incopro help?
As with all enforcement strategy online, it is essential to prioritise and take a strategic approach.
A Trade Mark owner must be able to assess which websites are the most harmful. The fact that a large number of infringing websites exist is not the point. Which website is the most popular, most visible and most harmful? Incopro’s brand protection technology enables a complete identification of all infringing websites affecting your Trade Marks. Incopro’s algorithms then go one stage further and assess which websites are the biggest threat – both in terms of visibility and in terms of commercial scale. Armed with this information, a Trade Mark owner can make the right strategic assessment on which websites to block and can show the Court that it has evidence to justify the targets that it has selected.
Second, if a website is blocked by court order, the Trade Mark owner must keep track of the website to ensure that all domains, sub-domains and IP addresses are blocked. Furthermore, the Trade Mark owner must ensure that other websites are not notified for blocking by the Internet Service Provider in error. Incopro’s systems enable a constant tracking of blocked websites to ensure that blocking is effective and that blocking does not over reach.
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