Cartier International AG and others v British Sky Broadcasting Ltd and others was a test case in which the court held that trademark holders may be granted site-blocking injunctions against internet service providers (“ISPs”). In the judgment, Mr Justice Arnold considered the nature of the court’s jurisdiction to award injunctive relief and concluded that the general powers of the courts with equitable jurisdiction to grant injunctions were unlimited.
The claimants in this case were trademark holders who had applied to the court for an injunction for the ISP defendants to block certain websites on the basis that their content infringed their trademarks. In domestic legislation the courts’ power to order site-blocking injunctions for content which infringes copyright is well established in section 97A of the Copyright Designs and Patents Act 1988. There is, however, no comparable statutory provision in place for trademark infringement. Mr Justice Arnold therefore had to consider whether the High Court had jurisdiction to award the injunctions sought prior to deciding whether it would be proportionate to grant them.
The courts’ jurisdiction to award injunctions is set out in section 37(1) of the Senior Courts Act 1981 which provides that: “The High Court may be order (whether interlocutory or final) grant an injunction . . . in all cases in which it appears just or convenient to do so“.
The ISPs submitted that the court’s jurisdiction to grant injunctions was limited to situations:
- where one party to an action can show that the other party has invaded, or threatens to invade, a legal or equitable right of the former, for the enforcement of which the latter is amenable to the jurisdiction of the court; and
- where one party to an action has behaved, or threatens to behave, in a manner which is “unconscionable”.
Mr Justice Arnold held that there were no such limits on the court’s jurisdiction. He considered that although in general the court exercises its discretion in accordance with well settled principles, those principles were not immutable and evolved over time as the court faced new circumstances.
The court therefore concluded that it did have the jurisdiction to grant the orders sought by the claimants.
It went onto consider whether it would be proportionate to exercise its jurisdiction and grant the relief sought by the trademark holders, taking into account:
- the comparative importance of the rights that engaged and the justifications for interfering with those rights;
- the availability of alternative measures to the trademark holders which were less onerous;
- the efficacy of the measures which the orders required to be adopted by the ISPs, and in particular whether they would seriously discourage the ISPs’ subscribers from accessing the infringing websites;
- the costs associated with those measures, and in particular the costs of implementing the measures;
- the dissuasiveness of those measures; and
- the impact of those measures of lawful users of the internet.
After a detailed factual analysis of these factors, Mr Justice Arnold concluded that granting the orders was justified and would strike a fair balance between the trademark rights of the claimants and the ISPs’ right to freedom to carry on business and internet users’ rights to freedom to receive information.
Mr Justice Arnold’s analysis of the court’s jurisdiction to grant injunctions is exciting for practitioners. It suggests that, in a rapidly evolving technological world, the courts are willing to be flexible in their approach to granting effective relief and it may encourage creative requests for relief in many different practice areas, including media and fraud.
Cartier International AG and others v British Sky Broadcasting Ltd and others  EWHC 3354 (Ch)