In a recent judgment handed down by the by the Court of Justice
of the European Union ("CJEU") the court stated that a
trade mark will not necessarily be infringed if it is used as a
keyword by a competitor. In this case, Interflora complained about
Mark & Spencer's use of the INTERFLORA trade mark as a
keyword in Google's AdWords service.
The court accepted that the INTERFLORA trade mark had acquired a
significant reputation in the florist industry. As a result, the
question that the court had to consider was whether Mark &
Spencer's use of INTERFLORA caused detriment to the distinctive
character of this trade mark.
In this regard, the test applied by the court was whether the
reasonably well-informed and observant internet user, who are
confronted with the display of an advertisement (as a result of the
keyword), would be able to identify that the goods or services
being displayed do not originate from the trade mark owner but from
The court held that, if this is the case, the reputation
associated with the trade mark will not be diluted. In fact, it was
held that such conduct will simply provide the internet user with
an alternative to the trade mark owner's goods and/or
In the circumstances it appears that this judgment indicates
that, as long as it is clear from the advertisement that the goods
and/or services are that of a competitor and not the trade mark
owner, competitors may actually have a defence against allegations
of infringement on the basis that their conduct amounts to fair
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.
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