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No more games as website blocking injunctions make their mark

11 Sep 2019

A recent decision of the High Court in England has highlighted the jurisdiction of the Court to grant injunctive relief against internet service providers requiring them to take measures to block, or at least impede, access by their customers to counterfeiter’s websites. It will be of keen interest to practitioners in the trademark sector but also has wider implications for online commerce.

The decision in Nintendo Co Ltd v Sky UK Ltd, Virgin Media Ltd and Ors came in a case brought by Nintendo to protect trademarks connected with the highly popular Nintendo Switch console. The trademarks were being infringed by a number of websites selling circumvention devices which compromised the integrity of the consoles and masqueraded as official Nintendo affiliates.

In its analysis of the legal position and Article 11 of the Enforcement Directive, the High Court cited the Supreme Court’s decision in Cartier International v BskyB  with approval and, in particular, the reasoning of Lord Sumption which indicated that the Court’s jurisdiction was not limited to cases involving infringement of IP rights.

The Court agreed with counsel for Nintendo that analogous criteria to the four threshold conditions identified in Cartier should be applied in cases which are not based on infringement of IP rights, namely:

  1. That the defendants are intermediaries;
  2. The users and/or operators of the website are infringing the claimant’s IP rights;
  3. Those users and/or operators are using the defendant’s services to infringe; and
  4. The defendants have actual knowledge of this.

In the Court’s view, Nintendo satisfied these conditions.

The Court then considered the factors applicable to the grant of such orders as a question of discretion. The eight criteria that a Court must consider in deciding whether to grant website-blocking injunctions, which were highlighted in Cartier, were cited with approval.

These are that the injunction must be:

  • Necessary
  • Effective
  • Dissuasive
  • Not unduly costly or complicated
  • Avoid barriers to legitimate trade
  • A fair balance between the fundamental rights engaged
  • Proportionate; and
  • Safeguarded against abuse.

Again, the Court was satisfied that Nintendo satisfied these factors, in particular highlighting the importance of proportionality. It is important to note that none of the defendants objected to the application (in fact, one party consented), an implicit recognition of the bona fides of Nintendo and the ability of the defendants to take steps to hinder the practices of counterfeiter’s websites.