In the second case brought by Cartier against ISPs (Cartier International Ltd and another v British Telecommunications plc and others), HHJ Hacon, sitting as a judge of the High Court, granted a website blocking injunction, requiring the ISPs to block access to websites that were selling goods that infringed Cartier’s trade mark rights.
The claimants and defendants in this case were for all practical purposes the same as those in Cartier International v British Sky Broadcasting  EWHC 3354 (Ch) (“Cartier 1”), previously reported on the blog here. Cartier 1 has been appealed, and the appeal is due to be heard on 13 April 2016.
Cartier owns a portfolio of registered trade marks including registrations for CARTIER and MONTBLANC. Cartier sought an injunction requiring the five main ISPs in the UK to block access to certain websites (the “target websites”) that Cartier said were being used by the operators to infringe Cartier’s trade mark rights by marketing goods (typically cheap copies of Cartier’s products) under Cartier’s marks. As in Cartier 1 there was no suggestion that the ISPs were committing any acts of infringement.
HHJ Hacon applied the principles set out by Arnold J in Cartier 1, and granted the injunction.
Although the defendants did not appear, they did submit a written note to the Court addressing issues of jurisdiction and proportionality. One of the issues raised was that, in relation to the second defendant, EE, the Claimant did not provide sufficient notice for EE to have knowledge of actual instances of use of its broadband services to access the target websites. The claimants only told the defendants that they had inferred from the evidence relating to the other ISPs that EE’s services could be used. That allegation, taken with the fact that EE had reasonable opportunity to investigate the problem, was considered by HHJ Hacon to qualify as actual notice.
The defendants also argued that notice should have been given to the operators of the target websites, who would have been able to attend Court and give evidence as to whether there was trade mark infringement. However, HHJ Hacon found that the ISPs could have challenged the allegation with their own evidence, or even sought evidence from the target websites, but chose not to do so. The evidence establishing trade mark infringement was unchallenged, and HHJ Hacon accepted it as evidence of infringement of the trade marks.
Finally, regarding proportionality, the defendants argued (amongst other submissions) that there are a four-figure number of websites that Cartier has identified as infringing its trade marks, and the cost of blocking all of these websites would be very large. HHJ Hacon disregarded this argument on the basis that this case was not concerned with speculation about further applications.
As Cartier 1 will be the subject of an appeal, HHJ Hacon granted the defendants permission to also appeal this decision.