By Nigel Miller, partner at Fox Williams LLP
After an extended Court case, involving a referral to the European Court of Justice (ECJ), the High Court has found that Marks & Spencer infringed Interflora’s trade marks by using them as Google Adwords to promote its own flower delivery service on the internet.
M&S paid Google Adwords to display advertisements for its flower delivery service on the search results page, so that when an internet user used Google to search for “interflora” and similar terms, the M&S service would come up as a sponsored link. Interflora sued M&S for infringing its trade marks.
The UK High Court referred various questions to the ECJ. The ECJ concluded that if the national court decided that the use of the Interflora trade mark as a keyword led internet users to believe, incorrectly, that the flower delivery service offered by M&S was part of Interflora’s commercial network, then the trade mark’s function in indicating origin would be damaged.
The High Court, using the criteria laid down by the ECJ, decided that M&S had infringed Interflora’s trade marks because M&S’s advertisements did not enable reasonably well-informed and reasonably attentive internet users to work out (or only with difficulty) if the service referred to in the advertisements originated from the trade mark owner, a business connected to it, or a third party. As a result, the trade mark’s “origin” function was damaged.
As an aside, the court noted M&S’s argument that all it was seeking to do was to present consumers searching for Interflora with an alternative to Interflora’s service. However, M&S did not seek to rely on the defence of legitimate comparative advertising under the Misleading and Comparative Advertising Directive, although the court suggested it might have done.
Although the decision went against M&S, the court pointed out that keyword advertising is not inherently or inevitably objectionable from a trade mark perspective, and, indeed, case law has recognised that this sort of advertising encourages competition.
The nature of the Interflora network was a special factor in the case as there was scope for users to be confused as to whether M&S was part of the Interflora network. Advertisers do not necessarily need to stop using their competitors’ trade marks for keyword advertising. If a reasonably well-informed and attentive Internet user can identify that the products referred to in an advert come from the advertiser, and not the trade mark owner, then the use of the trade mark will not be objectionable. Therefore, if there is any risk of confusion, advertisers bidding on third party trade marks as adwords should make it clear in their sponsored link that there is no connection between the advertiser and the owner of the registered trade mark.
The decision may be appealed and this is an area where further developments in the law can be expected.
Nigel Miller is a partner at Fox Williams LLP. Nigel can be contacted at NMiller@foxwilliams.com.