High Court grants website-blocking order against Internet Service Providers based on trademark infringement

On 17 October 2014 the High Court held that trademark owners may obtain a website-blocking order against Internet Service Provider (ISPs) if such websites are selling or advertising goods that infringe their trademarks.    

In the case brought before the High Court, six third-party websites were selling and advertising counterfeit goods that infringed the claimant’s trademarks. The claimant had sought an injunction against the five largest ISPs in the UK to force them to block or prevent access to those websites.

In the past, copyright owners have been able obtain such injunctions against ISPs in cases of copyright infringement on websites. Now, the High Court granted the same power to trademark owners by ruling that the defendants have a duty to block the online sale of counterfeit goods. Based on the High Court’s decision, a blocking-order may be granted based on a trademark infringement under the following conditions:

- Defendant is an ISP;      

- User/operator of the website in question infringes the claimant’s trademark;

- User/operator of the website uses the ISP’s to do that; and

- Defendant has actual knowledge of this infringement.

This decision of the High Court is the first in which an application for a website-blocking order against an ISP has been granted in order to combat trademark infringement. It is likely that other courts in the European Union will follow suit. (2014) EWHC 3354 (CH)