Website Blocking Order Granted to Protect Trade Mark Holder
WEBSITE BLOCKING ORDERS
Website blocking orders are injunctions ordering the ISP to block, or at least impede, access by their subscribers to the target website(s) selling counterfeit goods.
Such orders are attractive to rightholders as they circumvent the often futile route of pursuing highly evasive counterfeiters through the courts.
The orders themselves are not a new concept. They have been successfully utilised by copyright holders for several years, through section 97A Copyright, Designs and Patents Act 1988, which deals specifically with injunctions against service providers.
Making the orders available to trade mark holders seems logical progress. Indeed, it is perhaps surprising that it has taken until now for such orders to be granted.
The delay is likely to be in part due to the fact that despite Article 11 of the Enforcement Directive directing Member States to 'ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe an intellectual property right', to date UK statute only makes specific reference to the availability of such orders to copyright holders, leaving a gap to be bridged. ISPs have been understandably reluctant to concede that such relief should be granted to rightholders. Until now there has not been a sufficiently well resourced player with a significant interest in the outcome, to take on such formidable opponents in relatively ambiguous legal territory.
SECURING A WEBSITE BLOCKING ORDER - IN A TRADE MARK CASE
There are four threshold conditions a trade mark holder must meet in order to secure a website blocking order, they are not overly onerous.
The Court must be satisfied that:
- The ISP is an intermediary within the meaning of Article 11 of the Enforcement Directive (i.e. their services are used by a third party to infringe an IP right)
- The users and/or operator of the target website are infringing the claimant's trade mark
- The users and/or operator of the target website are using the ISP's services to infringe the claimant's trade mark (i.e. that the infringing websites are accessed via the ISP's services); and
- The ISP has actual knowledge of the infringement
The Court must also be satisfied that it would be proportionate to grant the order. In doing so it will consider:
- The comparative importance of the claimant's trade mark rights versus the ISP's freedom to carry on business and internet users' freedom to receive information
- The availability and suitability of alternative measures to combat the infringement
- The likely effect of the order, and in particular whether it would seriously discourage the ISP's subscribers from accessing the target website
- The costs associated with the order, and in particular the costs to the ISP of implementing the order
- The impact the order would have on lawful users of the internet; and
- The substitutability of the target website
Whilst proportionality will be tested on a case-by-case basis, unless there is a real shift in the effectiveness of the orders versus the cost of implementing the measures, it appears likely that many, if not most, sensible applications will meet the requirement.
Whilst it will remain possible for determined users to navigate their way around the website blocks, evidence surrounding the effectiveness of the section 97A orders suggests that the orders will be reasonably effective.
It is expected that this ruling will be adopted by the other EC Member States; therefore, tightening trade mark protection across Europe.
A rise in the number of website blocking orders based on trade mark registrations, rather than copyright is also anticipated as registered IP rights tend to be easier to enforce.
Nevertheless, with the predicted cost of unopposed orders exceeding £10,000 per website, it is not thought likely that the there will be a flood of applications - rather it is expected that rightholders will concentrate their resources on the more egregious infringers.
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