Supreme Court begins to hear arguments regarding website blocking for trade mark infringements

A case before the UK's Supreme Court is set to provide guidance on whether and to what extent internet service providers (ISPs) will be expected to pick up the cost of blocking customers' access to websites that facilitate the sale of fake goods, an intellectual property law expert has said.

On Tuesday, the Supreme Court began hearing arguments in an appeal raised by ISPs against a 2016 ruling of the Court of Appeal.

In its ruling, the Court of Appeal held that courts in England and Wales can impose injunctions on ISPs requiring them to block their customers' access to websites facilitating the sale of goods that infringe trade marks.

Although website blocking orders have been issued by courts against ISPs in a number of cases concerning copyright-infringing websites, the Court of Appeal's ruling was the first time that a court in the UK had ordered website blocking measures to be imposed in a case concerning the infringement of trade marks belonging to Cartier and Montblanc, the luxury watch and pen brands.

Under section 97A of the Copyright, Designs and Patents Act, the UK courts have the power to grant an injunction against an ISP if it has 'actual knowledge' that someone had used its service to infringe copyright. There is no equivalent provision in the UK's Trade Mark Act, but in its 2014 ruling the High Court said that the court’s power to grant an injunction could be invoked against ISPs in relation to trade marks. That finding was supported by the Court of Appeal.

However, BT and EE have raised an appeal.

According to a summary of the case published by the Supreme Court, the court will look at the "threshold conditions" that need to be satisfied for website blocking orders to be issued against ISPs in relation to websites infringing trade marks.

The Supreme Court will also look at "whether ISPs, as innocent parties, should be required to bear the costs of such blocking orders".

Iain Connor of Pinsent Masons, the law firm behind Out-Law.com, said: "Innocent parties caught up in the illegal activities of others are rarely expected to pick up the costs of providing the solution to the IP rights holders to prevent the infringement of intellectual property rights. The Supreme Court's ruling in this case is likely to provide guidance on the circumstances in which costs will be payable by ISPs in similar cases in future."