The High Court has handed down judgment in the long-running case of Interflora Inc v Marks and Spencer plc [2013] EWHC 1291 (Ch), May 2013. The case concerned the unauthorised use of third-party trade marks as advertising keywords through Google's AdWords service.
The dispute arose after M&S bought multiple keywords on Adwords which contained the trade mark Interflora, the name of the world's largest flower delivery network. Google Adwords displays sponsored advertisements (positioned in a specific part of their search results page) in response to a user searching for particular keywords. Keywords are available to be purchased and, where there are multiple purchasers, an auction is held to determine who will benefit from the most attractively-positioned advert. Google generates revenue by taking a fee from the advertiser on a "cost-per-click" basis.
After M&S purchased various Interflora keywords, users searching for Interflora were initially presented with a link to M&S's website, where it was possible to order flowers for delivery. Interflora brought proceedings on the basis that M&S had infringed their trade mark under Articles 5(1)(a) and 5(2) of the Trade Marks Directive (now replaced by consolidated Directive 2008/95/EC) and Articles 9(1)(a) and 9(1)(c) of the Community Trade Mark Regulation (now replaced by 207/2009/EC).
The Verdict
The aforementioned Articles 5(1)(a) and 9(1)(a) provide that the owner of a registered trade mark may prevent third parties from using in the course of trade any sign which is identical to his mark in respect of goods or services which are identical to those for which the mark is registered. Arnold J held that M&S had indeed infringed the Interflora mark under Article 5(1)(a) because their adverts did not enable "reasonably well-informed and reasonably attentive internet users" (at least not without difficulty) to determine whether the services offered in the advert were originating from Interflora or M&S. This was the case even though the adverts in question did not refer to Interflora in their text.
However, Interflora did not succeed in showing infringement under Articles 5(2) and 9(1)(c). In order to show infringement here, a claimant must establish that there has been at least one of three types of injury. These were set out by the European Court of Justice in the case of L'Oreal v Bellure as dilution (detriment to the distinctive character of the mark), tarnishment (detriment to the repute of the mark) and free-riding (taking unfair advantage of the trade mark's distinctive character or repute.
Interflora had argued that, through their use of the Interflora mark, M&S had incrementally persuaded internet users that the word did not relate to a specific flower delivery business but to flower delivery services in a generic sense. This, in the eyes of Interflora, constituted dilution of their mark. Arnold J could not see that there had been any such injury suffered by Interflora, and so their claim failed in this respect.
The Modern "Man on the Clapham Omnibus"
The judgment has attracted attention because much of its reasoning was based on a new test. The verdict of infringement was founded on the premise that the adverts ran the risk of misleading the "average reasonably well-informed and reasonably attentive internet user" into believing that M&S might be a member of the Interflora network. It will be interesting to see how this objective test evolves over time – as we all become more and more internet savvy so too will the "average reasonably well-informed and reasonably attentive internet user".
M&S are currently considering and appeal but for now, businesses using key word advertising should take heed, and consider whether their adverts are likely to cause confusion as to whether there is an economic connection between their own business and a trade mark owner. In this case, Interflora managed to succeed at least partially because of the nature of their business (a network of membership organisations), which ensured that many internet users were unclear on whether M&S formed part of the Interflora network. It seems likely that claimants with a more conventional business structure would find it more difficult to show infringement in the same way.
This article was written by Paul Herbert, Partner, Media department, with assistance from Alex Barker.
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