Interflora v Marks & Spencer: Online Keywords Dispute
Marks & Spencer had previously made use of Google’s Adwords facility to select the name ‘Interflora’ (in a variety of spellings) to promote its own retail flower services. When a Google user typed ‘Interflora’ into its search engine, an advertisement for the services provided by Marks & Spencer was displayed in the form of a ‘sponsored link’. Interflora objected to the actions of Marks & Spencer and began proceedings.
A number of questions were referred from the High Court of England and Wales to the Court of Justice of the European Union (CJEU) on the ambit of relevant provisions in the Trade Mark Directive and Community Trade Mark Regulation.
The CJEU ruled:
A proprietor of a registered trade mark is entitled to prevent the use of a keyword where:
- the keyword constitutes an identical sign in relation to identical goods/services; and
- use of the keyword is liable to have an adverse effect on one of the functions of the relevant trade mark; and
- the displayed advertising "does not enable reasonably well-informed and reasonably well observant internet users, or enables them only with difficulty to ascertain whether the goods or services concerned…originate from that proprietor or, on the contrary, originate from a third party".
In practice, as long as the displayed advert is not confusing, there will be no infringement.
However, the position may be different if the mark has a ‘reputation’. In its judgment the Court gave considerable weight to the ‘clear exploitation of a mark with a reputation’, holding that where a competitor takes an unfair advantage from the ‘distinctive character or repute of the trade mark (free-riding)’ there may be cause for complaint. This is the first decision by the Court which suggests that the selection and use of a registered trade mark as a keyword may be detrimental to the distinctive character of the mark. However, the only example given of this was where the effect of the advert was to contribute to the ‘genericising’ of the mark.
Whilst it would appear that this decision is encouraging for both Interflora and, indeed, Google, the result is tempered by the Court’s consideration of the relevant market, within which ‘well observant internet users’ operate. In particular, the Court suggested that the offering of an alternative (as opposed to an imitation) product or service may not offend the functions of a trade mark in such circumstances. Again, this is likely to come down to whether there may be confusion amongst users (and, in this case, taking into account Interflora’s unique distribution system).
All in all, there is everything to play for and the High Court’s ultimate decision is awaited with anticipation.