Recently Mr Justice Arnold in the High Court in London gave his judgment in the longstanding trade mark infringement dispute between Interflora and Marks & Spencer – see case.
This is the first long awaited ruling in the UK applying the tests laid down by the Court of Justice of the European Union (CJEU) in 2011 for assessing whether the use of keywords which are the same as or similar to a competitor’s trade mark amounts to trademark infringement.
Interflora is a very well known flower delivery network in many countries and in particular is well known and successful in the UK. Interflora owns Community and United Kingdom registered trademarks consisting of the word INTERFLORA. Marks & Spencer are a famous high street store selling a wide variety of goods, including flowers. This dispute essentially arose from the fact that both businesses operated internet websites for the sale and delivery of flowers. The issue to be decided was whether Marks & Spencer’s registration of keywords with Google consisting of the search term Interflora and similar terms infringed Interflora’s trademarks or not.
The litigation commenced several years ago, although there was delay as Justice Arnold had set various questions to the CJEU as the dispute raised complex issues of European trade mark law and facts. In 2011 the CJEU ruled that there could be trade mark infringement if the sponsored ad resulting from the search for the keyword (which sponsored results will be displayed above andor alongside the natural search engine results) if that ad did not enable normally informed and reasonably attentive internet users, or enabled them only with difficulty, to ascertain whether the goods or services referred to by the ad originated from the proprietor of the trade mark or an undertaking economically connected to it, or on the contrary, originate from a third party.
Following that 2011 ruling a variety of national courts across Europe have reached different decisions as to whether the use of a trade mark as a keyword amounted to trademark infringement or not.
The UK decision
On the basis of the facts and evidence, it was decided that Marks & Spencer’s registration and use of various Interflora keywords affected the origin function of and therefore infringed Interflora’s trade marks. The Judge concluded that even now (over five years from when keyword advertising first became big business) a significant proportion of internet users in the UK did not understand the difference between natural and sponsored/paid for ads triggered by a search for a keyword.
In such disputes the onus lies on the advertiser (here Marks & Spencer) to ensure that the advertisement does enable users to ascertain the origin of the goods and services without difficulty. It is not sufficient to establish an adverse effect on the trade mark that some internet users may have difficulty in grasping that the advertised goods or services are independent of the trade mark proprietor. Confusion on the part of ill-informed or unobservant internet users must be discounted.
In reaching the decision key points to be decided were whether the reasonably observant internet user would be aware that Marks & Spencer’s flower delivery service did not form part of the Interflora network, or whether the Marks & Spencer’s advertisement made that clear. The Judge noted that it was difficult absent an express indication in the advertisement, for such clarity to be provided. The nature of the Interflora network is that members often traded under their own names, some with or without the use of Interflora branding, and in addition several large retailers including supermarkets had formal commercial tie-ups with Interflora. That supported a plausible connection between Marks & Spencer’s flower delivery service and the Interflora network.
Whilst not a decisive factor, considerable commentary was made about Marks & Spencer’s decision not to produce any evidence of consumer reaction to its keyword advertising – something clearly within their control. The failure to produce such evidence did not mean that it could be inferred that the evidence would have assisted Interflora (i.e. showing confusion) but it made it more difficult for Marks & Spencer to successfully argue against the conclusions Interflora argued followed from the evidence. Detailed internet statistics demonstrated that internet users who clicked on the Marks and Spencers keyword link were significantly more likely to then visit the Interflora website than the average visitor to the flower section of the Marks and Spencers website.
This is a very thorough and detailed ruling, but does seem bedded to the very specific facts and evidence related to the unique nature of the Interflora network and the detailed statistical analysis demonstrating the clear commercial benefit which Marks & Spencer since using Interflora as a keyword. It would be wrong to see the case as a victory bouquet for all trade mark owners in the ongoing battle against the now well established use of keywords.
Whilst Interflora will correctly regard this as a blooming marvellous result (!), it will be interesting to see whether there is an appeal or not.
It is possible to see this ruling applying to similar networks of authorised retailers or exclusive distributors, but it should not be forgotten that Justice Arnold correctly stressed that keyword advertising is not inherently or inevitably objectionable from a trade mark perspective. For businesses using keywords which contain identical or similar words to third party registered trademarks, care should be taken not to use the registered trademark as part of the text of the sponsored ad and as far as possible for the advertiser to clarify in the text of the sponsored ad that it is not connected to the trade mark owner.
I suspect that we have not heard the last of this case as such a detailed and lengthy ruling can always provide verdant shoots for grounds of appeal…
On May 28, 2013