Cartier International AG & Ors v British Sky Broadcasting Ltd & Ors [2016] EWCA Civ 658 (06 July 2016)

Cartier International AG & Ors v British Sky Broadcasting Ltd & Ors [2016] EWCA Civ 658 (06 July 2016)

The Court of Appeal held that the court has jurisdiction under s.37(1) Senior Courts Act 1981 to grant website blocking injunctions against ISPs in cases of trade mark infringement, even absent a statutory equivalent to s.97A CDPA 1988. The power is not confined to wrongdoers and can be exercised where justice requires, including against intermediaries. The threshold conditions and principles for granting such orders are analogous to those for copyright, requiring proportionality and safeguards. However, the court found the judge erred in requiring ISPs to bear the costs of implementation; such costs should be borne by the rightholder.

Citation
[2016] EWCA Civ 658
Parties
Claimant/respondent: Cartier International AG; Claimant/respondent: Montblanc-Simplo GMBH; Claimant/respondent: Richemont International SA; Defendant/appellant: British Sky Broadcasting Limited; Defendant/appellant: British Telecommunications plc; Defendant/appellant: EE Limited; Defendant/appellant: TalkTalk Telecom Limited; Defendant/appellant: Virgin Media Limited; Intervener: The Open Rights Group
Jurisdiction
England and Wales
Judgment Date
06 July 2016
Procedural Posture
Appeal / Court of Appeal Judgment on Appeal From High Court
Outcome
Appeal allowed in part
Legal Topics
Website Blocking Orders, Trade Mark Infringement, Jurisdiction for Injunctions Against Intermediaries, Costs of Implementation, Proportionality of Injunctive Relief
Intellectual Property Civil Procedure Injunctions Website Blocking Orders Trade Mark Infringement Jurisdiction for Injunctions Against Intermediaries Costs of Implementation Proportionality of Injunctive Relief

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 3 Authorities cited 16 Party arguments 2 Amounts and remedies 5
Sign in to unlock

Parties

Cartier International AG

Claimant/respondent

Montblanc-Simplo GMBH

Claimant/respondent

Richemont International SA

Claimant/respondent

British Sky Broadcasting Limited

Defendant/appellant

British Telecommunications plc

Defendant/appellant

EE Limited

Defendant/appellant

TalkTalk Telecom Limited

Defendant/appellant

Virgin Media Limited

Defendant/appellant

The Open Rights Group

Intervener

Procedural Posture

Appeal / Court of Appeal Judgment on Appeal From High Court

Legal Issues

  1. 1 Does the court have jurisdiction to grant website blocking orders against ISPs in cases of trade mark infringement?
  2. 2 What are the threshold conditions and principles for granting such orders?
  3. 3 Should ISPs bear the costs of implementing blocking orders?

Ratio Decidendi

The Court of Appeal held that the court has jurisdiction under s.37(1) Senior Courts Act 1981 to grant website blocking injunctions against ISPs in cases of trade mark infringement, even absent a statutory equivalent to s.97A CDPA 1988. The power is not confined to wrongdoers and can be exercised where justice requires, including against intermediaries. The threshold conditions and principles for granting such orders are analogous to those for copyright, requiring proportionality and safeguards. However, the court found the judge erred in requiring ISPs to bear the costs of implementation; such costs should be borne by the rightholder.

Court Disposition

Appeal allowed in part

Orders

  • Website blocking orders upheld against ISPs for trade mark infringement.
  • Order requiring ISPs to bear implementation costs set aside; costs to be borne by Richemont.