Domestic court to decide if M&S infringed Interflora’s trademark rights after ECJ ruling

The European Court of Justice has ruled that high street retailer Marks & Spencer (M&S) can use Interflora’s trademark as part of its keyword advertising on major search engines, but a domestic court will have to determine whether it breached the florist’s trademark rights.

In Interflora v Marks & Spencer (see judgment), the ECJ was asked to determine whether it is fair for the retailer to profit from Interflora’s trademark when consumers had stipulated the florist’s name in internet searches.

The flower delivery firm launched a High Court case against M&S in 2008 after the retailer purchased several Interflora trademarks as keywords to trigger the display of a link advertising M&S’s flower delivery service. The text in the link made no reference to Interflora.

Interflora claimed that this was an infringement of its trademark and went to the High Court to argue that an injunction should be issued against M&S preventing it from using the trademark.

Ruling in that case (see judgment) Mr Justice Arnold referred a number of questions to the ECJ for consideration in order to instigate an EU-wide approach to how trademark disputes are handled by the courts.

Lawyers, however, said the ECJ ruling would put the onus on domestic courts to determine whether an infringement had occurred and this could depend on whether the trademark in question had been used in a derogatory fashion.

The ECJ ruled: “Where the advertisement displayed on the internet on the basis of a keyword corresponding to a trademark with a reputation puts forward – without offering a mere imitation of the goods […] – an alternative to the goods or services of the proprietor of the trademark with a reputation, it must be concluded that such use falls, as a rule, within the ambit of fair competition.”

Ashurst partner Mark Lubbock said: “The [ECJ] seems keen to distinguish between traders offering knock-off imitations and genuine competitors. Google will be pleased, though, as the court confirmed that the use of trademarks as AdWords by competitors does not automatically give rise to infringement.”

The case will now come back to the domestic court to be determined.

Hogarth Chambers’ Roger Wyand QC and Simon Malynicz of Three New Square were jointly instructed by Pinsent Masons partner Iain Connor for Interflora. One Essex Court’s Geoffrey Hobbs QC acted for M&S.