25 March 2011

Advocate General's Opinion Issues in Interflora v Marks & Spencer

Angela Thornton-Jackson

The Advocate General has just issued his opinion in the reference made by the UK Court in connection with the ongoing issue of Google AdWords.

Readers will be aware that the Google and other search companies sell established trade marks as keywords - often to competitors of the brand owner - to trigger sponsored links in internet search results.

There have been various cases in various jurisdictions and while there is no complete consistency or certainty in Europe, the general position is that is permissible for a search engine to sell keywords reflecting a trade mark to a trade mark owner's competitors as long as the search engine acts merely as a hosting intermediary and does not itself use the trade mark in a way which contravenes trade mark legislation.

However, a trade mark owner can prohibit an advert using a keyword, identical or similar to a registered trade mark, for identical goods or services where that advert does not enable consumers to confirm whether the goods or services referred to in the advert originate from the trade mark owner or from the competitor ie, where the use creates confusion. Full details of the earlier key decisions in Google v Louis Vuitton and the Portakabin case can be found in the May 2010 and September 2010 editions of our trade mark newsletter.

In this latest case, Marks & Spencer had bought the wording 'interflora' as a keyword under Google's AdWord system. Accordingly, consumers searching the term 'interflora' would find an advertisement from Marks & Spencer's rival flower service at the top of the search page results. The UK Court referred a number of questions to the European Court of Justice for clarification. Whilst the full decision of the ECJ is awaited, the highlights of the Advocate General's opinion was as follows:

The proprietor of a trade mark is entitled to prohibit the adoption of a keyword identical to their trade mark, in the case where the resulting advertisement does not enable an internet user to ascertain the origin of the goods and services (ie, there is some likelihood of confusion as to whether the goods and services come from the trade mark owner or from the competitor). Confusion as to origin would include belief by the public that the competitor was a member of the trade mark proprietor's commercial network when it is not, ie, falsely creating the belief that there is an economic connection between the two entities.

While there is essentially nothing new in the above, what is potentially of more interest is that the Advocate General went on to say that the trade mark proprietor can object to attempts to benefit from the power of attraction of a trade mark, its reputation or its prestige or to exploit the marketing effort expended by the proprietor of that trade mark. One would have thought that it is highly likely that the purchase of someone else's trade mark as a keyword is exactly chosen so that the internet user who searches the trade mark term will be presented with the competitors advertisement. If there was no intention to benefit from the power of attraction of the trade mark, it would not have been chosen as a relevant keyword.

While the ECJ is not obliged to follow the Advocate General's reasoning, in many cases it will do so.

It is suspected that this latter suggestion from the Advocate General which will be of most interest.

Indeed, if the ECJ confirms the Advocate General's line of reasoning, the very lucrative business of adwords and keyword purchasing may again be in doubt.

Further developments are awaited with interest.

Useful links

September 2010 Trade Mark Newsletter
May 2010 Trade Mark Newsletter