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cyberlaw:intermediaries_tm [2019/09/03 12:44]
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cyberlaw:intermediaries_tm [2019/09/03 12:56] (current)
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-1. 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.+[1]. 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.
  
-2. 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?+[2]. 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?
  
-3. 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)](http://​www.bailii.org/​cgi-bin/​redirect.cgi?​path=/​ew/​cases/​EWHC/​Ch/​2011/​1981.html),​ [2012] Bus LR 1471 ("_20C Fox v BT_"); _Twentieth Century Fox Film Corp v British Telecommunications plc (No 2)_ [[2011] EWHC 2714 (Ch)](http://​www.bailii.org/​ew/​cases/​EWHC/​Ch/​2011/​2714.html) , [2012] Bus LR 1525 ("_20C Fox v BT (No 2)_"); _Dramatico Entertainment Ltd v British Sky Broadcasting Ltd_ [[2012] EWHC 268 (Ch)](http://​www.bailii.org/​ew/​cases/​EWHC/​Ch/​2012/​268.html),​ [2012] 3 CMLR 14 ("​_Dramatico v Sky_"​);​ _Dramatico Entertainment Ltd v British Sky Broadcasting Ltd (No 2)_ [[2012] EWHC 1152 (Ch)](http://​www.bailii.org/​ew/​cases/​EWHC/​Ch/​2012/​1152.html),​ [2012] 3 CMLR 15 ("​_Dramatico v Sky (No 2)_"); _EMI Records Ltd v_ _British Sky Broadcasting Ltd_ [[2013] EWHC 379 (Ch)](http://​www.bailii.org/​ew/​cases/​EWHC/​Ch/​2013/​379.html),​ [2013] ECDR 8 ("_EMI v Sky_"​);​ _Football Association Premier League Ltd v British Sky Broadcasting Ltd_ [[2013] EWHC 2058 (Ch)](http://​www.bailii.org/​ew/​cases/​EWHC/​Ch/​2013/​2058.html),​ [2013] ECDR 14 ("​_FAPL v Sky_"​);​ and _Paramount Home Entertainment International Ltd v British Sky Broadcasting Ltd_ [[2013] EWHC 3479 (Ch)](http://​www.bailii.org/​ew/​cases/​EWHC/​Ch/​2013/​3479.html),​ [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](http://​www.bailii.org/​eu/​cases/​EUECJ/​2014/​C46612.html) in _Paramount Home Entertainment International Ltd v British Sky Broadcasting Ltd_ [[2014] EWHC 937 (Ch)](http://​www.bailii.org/​ew/​cases/​EWHC/​Ch/​2014/​937.html) ("​_Paramount v Sky 2_").+[3]. 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)](http://​www.bailii.org/​cgi-bin/​redirect.cgi?​path=/​ew/​cases/​EWHC/​Ch/​2011/​1981.html),​ [2012] Bus LR 1471 ("_20C Fox v BT_"); _Twentieth Century Fox Film Corp v British Telecommunications plc (No 2)_ [[2011] EWHC 2714 (Ch)](http://​www.bailii.org/​ew/​cases/​EWHC/​Ch/​2011/​2714.html) , [2012] Bus LR 1525 ("_20C Fox v BT (No 2)_"); _Dramatico Entertainment Ltd v British Sky Broadcasting Ltd_ [[2012] EWHC 268 (Ch)](http://​www.bailii.org/​ew/​cases/​EWHC/​Ch/​2012/​268.html),​ [2012] 3 CMLR 14 ("​_Dramatico v Sky_"​);​ _Dramatico Entertainment Ltd v British Sky Broadcasting Ltd (No 2)_ [[2012] EWHC 1152 (Ch)](http://​www.bailii.org/​ew/​cases/​EWHC/​Ch/​2012/​1152.html),​ [2012] 3 CMLR 15 ("​_Dramatico v Sky (No 2)_"); _EMI Records Ltd v_ _British Sky Broadcasting Ltd_ [[2013] EWHC 379 (Ch)](http://​www.bailii.org/​ew/​cases/​EWHC/​Ch/​2013/​379.html),​ [2013] ECDR 8 ("_EMI v Sky_"​);​ _Football Association Premier League Ltd v British Sky Broadcasting Ltd_ [[2013] EWHC 2058 (Ch)](http://​www.bailii.org/​ew/​cases/​EWHC/​Ch/​2013/​2058.html),​ [2013] ECDR 14 ("​_FAPL v Sky_"​);​ and _Paramount Home Entertainment International Ltd v British Sky Broadcasting Ltd_ [[2013] EWHC 3479 (Ch)](http://​www.bailii.org/​ew/​cases/​EWHC/​Ch/​2013/​3479.html),​ [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](http://​www.bailii.org/​eu/​cases/​EUECJ/​2014/​C46612.html) in _Paramount Home Entertainment International Ltd v British Sky Broadcasting Ltd_ [[2014] EWHC 937 (Ch)](http://​www.bailii.org/​ew/​cases/​EWHC/​Ch/​2014/​937.html) ("​_Paramount v Sky 2_").
  
-4. 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.+[4]. 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.
  
-5. 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.+[5]. 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.
  
-6. 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 and other trade mark owners, both here and in other countries.+[6]. 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 and other trade mark owners, both here and in other countries.
  
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