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Court of Appeal must maintain brand owners' right to obtain website blocking orders, says expert

The Court of Appeal in London must maintain the right of brand owners to obtain website blocking orders against internet service providers (ISPs) as a means of enforcing their trade mark rights against infringers, an expert has said.

The Court is expected to hear an appeal by BT, Sky, EE, TalkTalk and Virgin in April against a 2014 ruling by the High Court which ordered the ISPs to apply technical measures to their services to impede customers' access to six websites identified as selling counterfeit Cartier watches and Montblanc pens. 

That ruling served to expand the scope of UK intellectual property laws that film studiosmusic labels and football authorities have used to stop internet users from accessing websites that make copyright infringing material available.

Under section 97A of the Copyright, Designs and Patents Act, the UK courts have the power to grant an injunction against an ISP if it has 'actual knowledge' that someone had used its service to infringe copyright. No equivalent provision in the UK's Trade Mark Act, but in its 2014 ruling the High Court said that the powers of injunction could be invoked in relation to trade marks.

Earlier this week the High Court issued a similar order against the five ISPs in relation to five other websites that Cartier and Montblanc had flagged as infringing their trade mark rights. Cartier and Montblanc had tried and failed to get the website operators to stop advertising and selling fake replicas of their products before they asked the High Court to apply website blocking orders against the ISPs, according to the ruling.

Trade mark law specialist Iain Connor of Pinsent Masons, the law firm behind Out-Law.com, said: "This is the first case since Mr Justice Arnold extended the law of trade marks in a way analogous to the copyright infringement cases to give protection to brand owners against the sale of counterfeit products. In applying the law, judge Hacon felt obliged to apply these new principles despite noting that while the first case remains under appeal the law may subsequently change."

"This is great for brand owners and it is hoped the Court of Appeal does nothing to disturb the original decision," Connor said.

In the most recent case the ISPs had argued that Cartier and Montblanc had provided "no evidence" to show that their internet connection services had been used to infringe their trade mark rights, according to the ruling.

However, the judge said that Cartier and Montblanc had shown that the five websites infringed their trade marks and had established that the ISPs' services had been used for such infringement.

Judge Hacon said that the ISPs had "actual knowledge" of that infringement when the rights holders wrote to them to notify them of the fake goods that they had been able to buy in test purchases on the five websites and that it was proportionate to issue website blocking orders in the case.

However, the judge said that he was happy for the ISPs to bring an appeal against his ruling because his "judgment rests on a new development in the law created in [the 2014 Cartier/Montblanc ruling] which will be reviewed in April by the Court of Appeal".

It is possible that the Court of Appeal could hear the ISPs' appeal in the case in April at the same time as it assesses the appeal against the 2014 ruling, according to the High Court judgment.

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