Cartier succeeds in getting ISPs to block more counterfeiting websites

For a second time Richemont, owner of the luxury brands Cartier and Mont Blanc, has persuaded the court to order the UK’s main internet service providers (ISPs), including BT, Sky and TalkTalk, to block access to a number of websites selling counterfeit products.

This follows a landmark judgment in 2014 ('Cartier I'), in which Arnold J ordered the UK's main ISPs to block access to six websites. While blocking injunctions had previously been ordered in respect of websites promoting copyright infringement, this was the first time that trademark infringement had been used as a justification. The ISPs disputed the High Court's jurisdiction to make such an order and appealed the decision. The appeal is to be heard by the Court of Appeal in April 2016, with a decision expected this summer.

In the most recent High Court case, the ISPs made written submissions saying that they did not agree that the court had jurisdiction to grant such an order - as they will argue in the Cartier I appeal. They also said that a blocking injunction would not be proportionate - principally because they doubted that the five websites had large numbers of visitors buying counterfeit products. HHJ Hacon was not persuaded by the ISPs' arguments and made the order sought by Cartier, adopting Arnold J's reasoning throughout. It is likely that the order will be appealed by the ISPs, and the decision could yet be reversed by the Court of Appeal.

Practical implication for brand owners

The sale of counterfeits on the internet continues to be a serious problem, and website blocking is a very effective way of reducing the ads available to the UK public. This decision shows that the English courts are willing to order ISPs to block access to websites selling counterfeits, even though the original Arnold J decision is under appeal.