A recent UK High Court decision may influence how Irish courts deal with online trade mark infringement. This case is the first instance of a website blocking injunction being granted against Internet Service Providers (ISPs) in the UK for trade mark infringement. The claimants, owners of various well known trademarks, sought and were granted injunctions against five ISPs (which collectively had a market share of 95% of UK broadband users) requiring them to block access by their respective subscribers to six websites which advertise and sell counterfeit goods.

In recent years site-blocking injunctions had been regularly granted in the UK for copyright infringement under UK Copyright law. As there is no specific statutory power to grant such injunctions for trade mark infringement in the UK, the UK Court relied on its inherent power to grant injunctions under the Supreme Courts Act.

The Court noted that even if the Courts did not have the power to grant such injunctions upon a purely domestic interpretation of the relevant section of the Supreme Court Act, the section could be read as conferring such a power in light of Article 11 of the EU Directive on the enforcement of intellectual property rights.

The Court set down the following threshold conditions that must be satisfied for a website blocking injunction to be granted:

• The ISPs must be intermediaries.
• The operators of the websites must be infringing the claimant’s trademark rights.
• The operators of the websites must use the ISP’s services to infringe.
• The ISPs must have actual knowledge of this.

The second step of the Court’s test is that the relief sought must be:

• Necessary
• Effective
• Dissuasive
• Not unnecessarily complicated or costly
• Not a barrier to legitimate trade
• Fair and equitable and strike a “fair balance” between the applicable fundamental rights
• Proportionate

This judgment is of particular interest in Ireland, given that our Trade Marks Act equally does not specifically empower an Irish Court to make website blocking injunction orders against ISPs and in circumstances where our High Court has a similar power to grant injunctions.     

Contributed by Charleen O’Keeffe.