A Supreme Court ruling delivered in recent days could have far-reaching implications for trade mark holders in the UK.
Earlier this week, telecoms giant BT won a four-year legal battle against jewellery retailer Cartier with regards to who should pay the costs of web blocking orders in instances where rights-infringing material needs to be ‘blocked’ online.
The case, which comes at a time when internet companies are facing increasing pressure to crack down on internet-related crime, centred on whether internet service providers (ISPs) or trade mark holders themselves should be required to pay.
Back in 2014, a previous ruling found that ISPs must ‘block’ any bogus or fake versions of brand websites which emerge on the web, but left open the question of whether the ISP or the trade mark holder themselves should pay the costs of enforcing such blocking orders.
More recently, a 2016 Court of Appeal ruling held ISPs liable for the costs – and BT has been attempting to overturn this ruling ever since as part of its ongoing legal battle against Cartier, a brand which has been infringed on the web numerous times.
In recent days, the Supreme Court has reconsidered the case and found unanimously in favour of BT and co-appellant EE.
In a ruling which The Telegraph describes as “potentially a landmark decision,” Supreme Court Judge Lord Sumption found that trade mark holders must pay “reasonable costs” to ISPs in order to enforce future web blocking orders against infringing websites.
However, commentators have noted that the ruling does not make it explicitly clear how the concept of “reasonable costs” will be defined.
Furthermore, critics have said that the ruling also leaves open the question of whether the same principle will apply to copyright-related injunctions.