Major UK ISPs to Appeal Website Blocks for Trade Mark Abuse

Several major broadband ISPs including BT, Sky Broadband, EE, TalkTalk and Virgin Media will in April go to the Court of Appeal (London) in order to argue against a 2014 ruling by the High Court, which extended court ordered website blocks to include sites that sell counterfeit goods (abuse of Trade Mark).

The original ruling (here) effectively acted as an extension to Section 97A of the Copyright, Designs and Patents Act, which prior to that case had only been used to force Internet providers into blocking access to website that were known to facilitate copyright infringement (piracy).

The case itself, which involved the owner of luxury brands including Cartier and Mont Blanc (Compagnie Financière Richemont SA), essentially sought to block websites that abuse company trademarks / logos, such as by dealing in counterfeit goods. In the end the High Court approved the action and several websites were subsequently blocked.

At the time some were also concerned about overzealous application of the law, which could in theory be used against companies like eBay or Amazon, although in reality such extreme claims are unlikely to make it past a judge and indeed they never have (none like that have ever been made).

Most recently Cartier and Montblanc have asked a court for five more websites to be blocked, including perfectwatches, pursevalley, montblancebay, montblanc.**.co and replicawatchesstore / watchmush. The ISPs contested this case, saying that Cartier and Montblanc had provided “no evidence” that their networks were being abused to infringe the Trade Marks and that the UK Trade Mark Act does not include a provision for website blocking.

The court ultimately granted the blocks, although at the same time it noted that the original ruling in 2014 was due to be appealed in a hearing scheduled for 13th April 2016 (the same ISPs will be involved) and that the outcome could in theory affect the latest case.

Judge Hacon’s Conclusion

Both sides addressed the question of permission to appeal in their written submissions. It may help the defendants to decide whether to attend the hearing on the form of the order if I say something about that now.

The claimants and defendants all took the view that whatever the outcome the losing party should have permission to appeal. That is obviously right since my judgment rests on a new development in the law created in Cartier I [the original case] which will be reviewed in April by the Court of Appeal. I will give the defendants permission to appeal at the hearing on the form of the order, unless they express any wish to the contrary.

The defendants contended that time for service of an appellants’ notice should be extended until after judgment in the appeal in Cartier I. They argued that money could be saved because the outcome of the appeal may well in effect decide the outcome of the appeal in the present proceedings which could then be resolved with minimum cost.

I can see that, but the claimants say they intend to apply to the Court of Appeal to have the appeal in this action heard at the same time as the appeal in Cartier I. Whether or not that happens is a matter for the Court of Appeal and I should not do anything that may delay matters and so affect that decision. I therefore indicate now that there will be no extension of time to serve an appellants’ notice.

At this stage we can’t see that the ISPs would have a particularly strong case to reverse the change and so we suspect that the blocking order is likely to be maintained. Never the less the whole process can be very costly for both sides.

Wiggin LLP has previous stated that an unopposed application tends to cost around £14,000 per site. On top of that the additional admin involved in maintaining the block and keeping ISPs up-to-date with related IP address changes and new URLs (Proxy Servers) for the site comes to around £3,600 per website per year.

Meanwhile ISPs also incur on-going costs as part of their work to introduce such blocks. EE previously suggested that a “near four figure sum” was involved with each update, while Sky Broadband hinted at a “mid three figure sum” and then roughly half that for future updates to the same block (i.e. under £1000). Similarly Virgin Media pegged their own annual costs at a “low five figure sum“.