Flower power

The High Court has been left to decide whether Marks & Spencer (M&S) infringed Interflora’s trademark after the European Court of Justice (ECJ) ruled that the retailer could use the florist’s trademark as part of its keyword advertising on major search engines.

Rather than bringing about some much needed clarity in the world of adwords, the decision has created more opportunities for lawyers as each trademark battle will have to be decided on its own merit.

The case was kick-started in 2008 after M&S purchased several of the florist’s trademarked keywords and phrases in Google AdWords. This meant that searching ’Interflora’ on Google would trigger the display of a link advertising M&S’s flower delivery service. The text in the link made no reference to Interflora, although it was a supplier used by the retailer.

It is not the first case of its kind to reach Europe’s highest court. In March last year the ECJ rejected an attempt by LVMH, owner of the Louis Vuitton brand, to force the search engine to stop selling adwords related to its brand.

In the case of LVMH v Google, the ECJ found that allowing third parties to purchase brand names as advertising words did not constitute a trademark infringement. The judgment focused on whether the advertiser that held the keyword would have an adverse effect on the ability of the trademark to act as a badge of origin.

Concerned that the UK could be out of touch with the rest of Europe in how to legally approach adwords, the Interflora matter was referred up to the ECJ by Mr Justice Arnold in March last year (see judgment). 

At that point, the judge said, a further three French cases had been referred to the court, along with two German cases and a Dutch one. Collectively the matters had a common theme: whether or not the use of a trademarked term as a keyword constitutes ’use in trade’, and therefore trademark infringement according to EU law.

In Interflora the court effectively decided that each case must be determined on its own merit.

The case was the first test of the LVMH vs Google decision in that it concluded that the High Court should determine whether a ‘well informed’ internet user would be aware that M&S is not a subsidiary of Interflora.

The ruling stated: “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.”

Three New Square barrister Denise McFarland comments: “Brand issues almost always boil down to consideration of  the impact of the mark or brand on members of the target market; if those persons are deceived the courts will always be keen to prevent this  happening.”

That said, McFarland questions what constitutes being a ‘well informed’ internet user and whether this can be determined by the court to create a principle based decision.

With no firm decision as to the outcome, the only real winners here are the lawyers.

Meanwhile, the ECJ will be called upon time and again to determine the outcome of such disputes.