Thorn in the side of TM owners

As internet users become smarter proving trademark infringement in adword cases will be harder

The judgment of 21 May 2013 of Mr Justice Arnold in the Interflora v M&S trademark infringement case involving Google AdWords does not, in my opinion, vastly change the existing adword jurisprudence.

The starting point remains that using an adword matching a registered trademark is an acceptable and common practice and is part of the competitive online market. Provided the adword does not lead ‘the average internet user’ to believe there is some affiliation with the trademark owner, there would be no infringement of the trademark. The Interflora ruling has not changed that position and is arguably fact specific to the “rather different” nature of Interflora’s business which covers a network of smaller businesses permitted to use its brands.

The finding of infringement in this case is, in my view, correct based on the facts and the Interflora business model. Enough Internet users would have believed that M&S were part of the Interflora network or had a commercial tie-in with them, thus adversely affecting the origin function of the Interflora trademark.

But what of the ‘average, reasonably well-informed internet user’ from whose position the judge had to consider the facts?

Arnold J went into detail analysing the concept of the ‘average consumer’ in trademark case law, concluding that such a consumer is synonymous with the ‘average, reasonably observant internet user’ standard that has arisen through the body of adwords decisions.

I believe that the identity and number of ‘average, reasonably well-informed and reasonably observant internet users’ and the risk that they may be confused by adwords containing trademarks, will change over time. In my view, this will occur because of ever increasing levels of internet use, coupled with the general developing shrewdness and understanding internet users have of advertising practices on the web.

The judge’s decision supports the view that internet literacy has increased and continues to do so, with the judge commenting: “I consider that internet users are more likely to be aware both that there is a distinction (between natural search results and paid adwords) and the broad nature of the distinction than they were in May 2008”, (the time the acts complained of commenced).

The judgment therefore already recognises a change in the awareness of internet users.

The concept of a ‘significant proportion’ of internet users was often referred to in the Interflora decision. If that level of user assumes a connection with the brand owner, there would be infringement.

If, as I hypothesise, internet users are continuing to increase in number and in smartness, the proportion of those who may be confused will consequently fall.

Also, if, as the judge states, ill-informed and unobservant users are to be discounted, then I believe a trademark owner will have a harder time in future satisfying the requirement that a ‘significant proportion’ of users are confused, other than in cases of flagrant abuse of a brand.

Rob White, senior patent attorney, Avidity IP