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Interflora v Marks and Spencer trade mark infringement

12 June 2013

Trade mark infringement where keyword adverts do not clearly distinguish the origin of goods.

In a decision that will be given a cautious welcome by brand owners, the High Court has ruled that, in purchasing Interflora as a keyword from Google and using this keyword to advertise its own flower-delivery service, retailer Marks & Spencer (M&S) infringed Interfloras registered trade marks.

Googles AdWords service enables companies to buy the right for their advertisements to appear beside naturally-occurring results in search-result listings when certain terms (keywords) are entered into the Google search engine. In this case, M&S had purchased terms including Interflora and Interflora flowers, which led to a link to M&Ss online flower delivery service being provided when a Google user searched these terms.

Interflora initially brought its claim against M&S in 2008. The matter was then referred to the Court of Justice of the European Union (CJEU), which ruled that it could be legitimate for companies to make use of rivals trade marks in keyword advertising but only if the advertisement did not undermine the function of the trade mark by confusing internet users into thinking that the goods were being sold by the trade mark owner instead of the actual advertiser.

Applying the ruling of the CJEU, the High Court decided that M&Ss use of the Interflora keywords infringed the Interflora registered trade marks. It decided this because the M&S advertisements "did not enable reasonably well-informed and reasonably attentive internet users, or enabled them only with difficulty, to ascertain whether the service the adverts referred to originated from [Interflora], from an undertaking economically connected with it, or originated from a third party".

In reaching this conclusion, the High Court rejected M&Ss argument that there was a single meaning rule in European trade mark law. It was sufficient for a finding of infringement that a significant section of the relevant class of persons was misled into believing that there was a connection with the trade mark proprietor.

If this was the key finding of law, the key finding of fact was that the way in which Interflora operates - it is a network of franchisees with commercial links to certain large retailers - made it more likely that consumers would be confused by M&Ss activities into believing that there was some kind of link between M&S and Interflora. The High Court found that Interflora was "rather different to most trade marks, because it signifies a network of businesses which also operate under their own brand names" and "the prominence given to the Interflora brand name varies from member to member."

It is important for brand owners to understand that this case does not in any way cast doubt on the general proposition that, from a European law perspective, there is nothing inherently objectionable in a competitor purchasing another companys trade mark as a keyword. Indeed, the CJEU takes the view that this is, in principle, an activity that should be welcomed as promoting competition.

M&Ss problem in this case arose from the fact that, according to the CJEU, it is for the company that purchases a competitors mark as a keyword to ensure that its advertisement is "transparent as to the origin of the goods or services advertised in it." Due to the particular circumstances surrounding the way in which the Interflora mark is used (as mentioned in the previous paragraph), M&S had a higher bar to clear than would ordinarily be the case and the Court found that it had failed to do this.

In summary, while this decision may give some comfort to brand owners concerned about keyword use of its trade marks by competitors, that comfort is very limited. As the Court made abundantly clear, trade mark use of this type is not inherently objectionable. Each case must be examined on its own merits to determine whether confusion as to the origin of the competitors services is likely to result.

If you would like more information on this topic please contact Mark Snelgrove 0115 976 6266 or Laura Mackenzie 0121 237 3959.

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The content on this page is provided for the purposes of general interest and information. It contains only brief summaries of aspects of the subject matter and does not provide comprehensive statements of the law. It does not constitute legal advice and does not provide a substitute for it.

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