Cartier International Ag V British Sky Broadcasting Ltd

A landmark UK judgment establishing that internet service providers (ISPs) can be ordered by courts to block websites selling counterfeit goods.

Summary

Cartier, the luxury brand, discovered that several websites were selling counterfeit Cartier jewellery and watches. Since the operators of the infringing websites were located overseas and difficult to identify or prosecute, Cartier sought an order against major UK Internet Service Providers (including Sky, BT, Virgin Media) to block access to these websites.

The key question was whether a court can force ISPs—even though they are not infringers themselves—to block websites that facilitate online trademark infringement. The High Court held that such blocking orders are lawful, proportionate, and necessary to protect trademark rights in the digital environment.

This case set an important precedent for trademark enforcement against online counterfeiting.

Facts of the Case

⦁ Cartier International AG is a world-renowned luxury brand owning several registered trademarks.

⦁ Numerous counterfeit-selling websites were identified, operating anonymously and hosted outside the UK.

⦁ These websites used Cartier’s trademarks and product images to mislead and attract customers.

⦁ Cartier could not directly sue the website operators because they were hidden behind privacy shields or located in uncooperative jurisdictions.

Therefore, Cartier approached UK courts seeking an order requiring ISPs—such as Sky, BT, Virgin Media, TalkTalk, and EE—to block public access to these infringing websites.

ISPs argued that:

⦁ They are “mere conduits” and not responsible for users' activities.

⦁ Courts have no jurisdiction to impose such obligations for trademark infringement (unlike copyright, where such provisions exist in EU law).

⦁ Blocking orders may burden ISPs with costs.

Findings

The High Court held the following:

⦁ ISPs can be required to block websites used for trademark infringement.

Even if the primary law (EU Directive 2004/48/EC) does not explicitly mention trademark blocking, courts have inherent jurisdiction to issue such orders.

⦁ ISPs are intermediaries whose services are used by infringers, giving courts authority to intervene.

⦁ Blocking orders are necessary and proportionate, considering:

⦁ The scale of counterfeiting

⦁ Difficulty in identifying the real infringers

⦁ Low burden placed on ISPs

⦁ Importance of protecting trademark owners

⦁ No effective alternative remedies available

⦁ Costs of implementing blocking orders should be shared, but the majority burden lies with ISPs because they facilitate public access.

The ruling strongly reinforced online trademark protection.

Suggestions

The Court emphasized that:

⦁ Brand owners should monitor and act promptly against online infringement.

⦁ ISPs should cooperate fairly and implement technical measures effectively.

⦁ Blocking orders should be narrowly tailored, regularly reviewed, and updated to avoid over-blocking.

⦁ Public interest and freedom of information must be balanced with rights of trademark owners.

This judgment encouraged collaboration between rights holders and ISPs to combat online counterfeiting.

Judgment / Decision

The Court granted Cartier the blocking order. It ruled that:

⦁ ISPs must block access to specific counterfeit websites identified by Cartier.

⦁ The order was lawful, effective, and proportionate.

⦁ Trademark owners are entitled to seek such remedies even if explicit statutory provisions are absent.

This judgment became a significant authority for granting blocking orders to tackle online trademark infringement and influenced several courts globally.