Interflora wins trade mark case against Marks & Spencer

May 2013

The High Court has ruled that Marks and Spencer’s use of “Interflora” on Google’s AdWords advertising service is an infringement of Interflora’s trade mark. 

History
The case had been pending since 2008 and has involved a complex process which included the UK High Court referring a number of questions of interpretation of the relevant European trade mark legislation to the Court of Justice of the European Union (CJEU).  The case was finally heard in the UK High Court in April 2013 and decided on 21st May 2013. 

Facts of the Case 
It was accepted that the trade mark ‘Interflora’ was well known as a brand associated with a network of florists. In this case, Marks & Spencer from May 2008, just after Google relaxed its keyword bidding policy in the United Kingdom, bid on the keyword ‘Interflora’ which triggered a keyword advertisement linking through to the Marks & Spencer’s website promoting its own florist service. The advertisement did not visibly include any reference to the ‘Interflora’ trade mark and Marks & Spencer was not part of the Interflora network. 

Finding of the judge
It was held that the M&S advertisements, which are the subject of Interflora’s claim, did not enable reasonably well-informed and reasonably attentive users to ascertain whether the service referred to the advertisement originated from the proprietor of the trade mark (M&S), or an undertaking economically linked to the trade mark owner or originated from a third party. 

On the contrary, as at 6 May 2008, the judge held that a significant proportion of the consumers who searched for 'Interflora' and then clicked on M&S’s advertisements displayed in response to those searches, were led to believe, incorrectly, that M&S’s flower delivery service was part of the Interflora network. 

Conclusion
Although, this decision may ultimately have turned on the specific facts of Interflora's business model in that it is a network of florists, and it was held that the M&S advert did not enable consumers to easily determine that M&S was not part of that network, the broader ramifications are that it is likely that many advertisers who use Google's AdWords system and other keyword advertising services will now proceed with more caution when bidding on competitors trade marks. The judge effectively held that the average consumer, although a reasonably well-informed and observant internet user is not particularly technically literate, does not know precisely how AdWords operates and is not aware of the issues. 

The decision does not hold that keyword advertising using a competitor's trade mark is inherently prohibited. In fact the CJEU has held in most cases such usage promotes competition. However, what the decision has held is that if the way in which the advertisement appears or is used leads to confusion amongst reasonably observant internet users whether the advertisement is in any way linked to the trade mark owner or that they can only determine that question with difficulty then such usage is prohibited.

This case is unlikely to be the last statement on the use of trade marks in keyword advertising in the UK and more cases are likely to follow. In fact this case is open to appeal by Marks & Spencer.

Contributor: Lee Curtis

For further advice on this or any other trade mark matter, please contact your usual HGF representative or email marketing@hgf.com with your query.