South Africa: Advocate General’s Opinion: Interflora Inc vs Marks & Spencer

Last Updated: 28 July 2011
Article by Donvay Wegierski

Does use of a keyword that corresponds to a trade mark by advertisers on an internet search engine constitute "use" of a trade mark and if so can the trade mark owner prohibit such use?

Advocate General Jääskinen's (AG) opinion in relation to Interflora Inc, Interflora British Unit v Marks & Spencer PLC, Flowers Direct Online Limited C-123/09 delivered on 24 March 2011 indicates that brand owners can, in certain circumstances, prevent keyword advertising.

The opinion has been widely reported in the media and brand owners are therefore hopeful that the opinion will be followed by the European Court of Justice (ECJ). Although theAG's opinions are not binding on the ECJ they are persuasive and have reportedly been adopted in at least 80% of the cases before the full court.

The High Court of Justice (England and Wales, Chancery Division) had previously opted to stay proceedings in the matter and instead referred it to the ECJ in July 2009.

Initially ten questions were referred to the ECJ. However questions five to ten were withdrawn by the High Court following the Google France and Google judgments (joined cases C-236/08 to C-238/08). The remaining four questions were consequently divided into two groups by the AG:

  • Rights conferred to all trade marks under Article 5(1) of the First Council Directive 89/104 EEC (Directive) and Article 9(1)(a) of Council Regulation (EC) No. 40/94 (the regulation).
  • Protection of trade marks with a reputation under Article 5(2) of the Trade Marks Directive 89/109.

Both the Directive and the regulation are applicable to member states of the European Economic Community.

In his analysis, the AG states that while these questions are subject to examination in light of Article 5(1)(a) and 5(2) of the Directive, the interpretation is equally applicable to Article 9(1)(a) and (1)(c) of the regulation.


In past cases aggrieved parties have chosen to institute proceedings against Google for its sponsored link and competitor bidding practices. However in this instance, Interflora Inc instituted trade mark infringement proceedings against Marks and Spencer (M&S) directly.

The applicant, Interflora Inc, is a US corporation with a worldwide flower delivery network and is the proprietor of trade mark registrations on a global scale for the INTERFLORA mark in various classes including class 31 (plants and flowers), class 35 (advertising services), and class 39 (transportation of flowers and gifts).

The respondent is M&S a well known UK retailer offering a wide range of goods and services via its stores and its M&S also offers a flower delivery service and purchased keywords for Google's AdWord paid referencing service. Consequently M&S advertisements appeared under the "sponsored link" heading when internet users entered the search term "interflora" or the like on Google. Importantly the advertisements did not contain any references to the INTERFLORA mark and its services and instead offered flower delivery services from M&S Flowers online.

The purchase of the keywords purportedly coincided with Valentines Day and, being a significant day for flower trade, further prompted Interflora to institute trade mark infringement proceedings against M&S.

Article 5(1)(a) of the Directive

Article 5(1)(a) affords the exclusive right to a proprietor of a trade mark to prevent the unauthorised use of a sign that is:

  • Identical to a registered trade mark and used in respect of identical goods and/or services for which the mark is registered.
  • Similar to a registered trade mark and is used in respect of similar goods and/or services where confusion and/or association with the registered trade mark and proprietor is likely.

The interpretation of Article 5(1)(a) offered by the AG is that in instances where a keyword is identical or similar to a registered trade mark and is used in respect of identical or similar goods or services, the unauthorised party can be prohibited from doing so. The proviso is that the advertisement does not enable, "an average internet user or enables the said user only with difficulty" to determine the origin of the advertisement.

The opinion acknowledges that the Google France and Google case, the only judgment involving a search engine operator, established that the operation of a search engine or a paid referencing service does not constitute "use" of a trade mark. Instead it is the advertiser itself who both chooses and uses a keyword. While these adverts in the main do not associate the advertiser with the trade mark, and even less so when used in respect of different but somewhat related goods and services, the likelihood of confusion on the part of the internet user cannot always be excluded.

Pertinent to the AG's reasoning is that he acknowledges that the INTERFLORA trade mark is well-known for its network of flower delivery services and has therefore also gained a secondary meaning in commerce. Consequently he is of the view that the M&S Flowers online advertisements, shown when typing in the "interflora" keyword, are likely to create an association between M&S and Interflora in the mind of the average internet user.

Article 5(2) of the Directive

The questions referred to the ECJ seek clarity as to when Article 5(2), which protects against dilution of trade marks with a reputation, applies. Reference to dilution in EU law concerns the terms "blurring", "tarnishment" and "free-riding" while similar provisions in US law concern only "blurring" and "tarnishment".

Considering Davidoff v Durffee (C-292/00), the AG asserts that protection against dilution for a trade mark with a reputation extends to identical as well as similar signs, goods and/or services. Consequently the extended protection in terms of Article 5(2) of the Directive is afforded against a user of an identical or similar sign where the parties are competing commercially.

So as to address these three concepts comprising dilution and further determine whether Article 5(2) of the Directive applies to the Interflora matter, the AG maintains that as per Google France and Google, the visible outcome or sponsored link ultimately revealed to the internet user should be the starting point.

Blurring, tarnishment and free-riding

"Blurring" arises when a sign or mark is used in a manner that does not only identify the goods and/or services as belonging to one source namely the trade mark holder. Although the INTERFLORA mark risks blurring because the M&S adverts offer flower delivery services, this argument is dismissed in the opinion because the INTERFLORA mark does not appear. The AG states that the sign must both be present in the advertisement and be used in a generic manner that covers a group of goods or services generally for there to be blurring.

L'Oreal SA & Others v Bellure Nv & Others (case no.487/07) dealt with the imitation of luxury products finding that there is "tarnishment" when the use of a sign is detrimental to the mark's reputation. The advertised M&S flower services offer an alternative to Interflora, but will not necessarily negate the image of the INTERFLORA mark. Acknowledging that it is not a case about tarnishment, the opinion deals no further with this issue.

The L'Oreal judgment further states that "free-riding" occurs when an unauthorised user takes unfair advantage of a mark with a distinctive character and repute by benefitting from it, without expending any additional effort or compensating the trade mark holder for any of the benefit derived. Free-riding may be better explained as, "riding on the coat tails of the trade mark proprietor". Following this rationale the use complained of does not necessarily need to be detrimental to the trade mark proprietor.

The AG's view however is that it would be anti-competitive if a trade mark proprietor could assert its right to prohibit the unauthorised use of a sign in all instances even when the use complained of is not harmful. He states that even if the advertisement in the sponsored link contains the mark, this may still be acceptable as comparative advertising. Although M&S also offers flower delivery services there are no comparisons drawn or express references made to the INTERFLORA mark therefore no free-riding.


The opinion indicates that there are certain circumstances when trade mark proprietors may be able to prevent the use of a mark in keyword advertising. In terms of Article 5(1)(a) of the Directive, this could occur if:

  • there is unauthorised use of an identical or similar sign to a trade mark as a keyword and the advertisements revealed refer to the trade mark; or
  • the origin of the goods and/or services offered in the advertisement are not clear; or
  • the average internet user is likely to be misled into believing there is an association between the trade mark proprietor and advertiser.

And in terms of Article 5(2) of the Directive, this could occur if:

  • the keyword used is identical to a reputable trade mark and the advertisement refers to the trade mark; or
  • the mark is used in a generic manner (blurring) or is an attempt to take unfair advantage of the goodwill and repute associated with the mark (free-riding).

In September 2010 Google changed its AdWord policy allowing companies to use competitors' trade marks as keywords so as to display their own advertisements in search results. The ECJ ruling in the Interflora matter is expected some time this year and, if the opinion is adopted, advertisers and arguably Google, could be forced to revisit keyword advertising and sponsored link strategies.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions