Mark & Spencer (M&S) has lost a long-running trademark battle with Interflora after the High Court ruled that the retailer had infringed Interflora’s trademark.
The ruling brings to an end a case that began in 2008 and signals a win for Pinsent Masons partner Iain Connor who instructed 11 South Square’s Michael Silverleaf QC for Interflora.
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.
The florist claimed this impeded its search engine optimisation (SEO) results. The case was referred to the European Court of Justice (CJEU) in 2009 by Mr Justice Arnold to determine 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 CJEU held that if the use of Google Adwords could incorrectly lead “reasonably well-informed and observant internet users… who have entered the search terms” to believe that M&S was part of the Interflora network then it would equate to trademark infringement.
The case was referred back to the domestic court and in June Arnold J gave permission for Interflora to adduce, in its trade mark infringement claim, evidence of witnesses who had responded to a survey, even though the survey itself wasn’t admitted.
M&S, however, appealed the decision and the CoA ruled that, in trade mark cases, evidence from members of the public could not stand as proxy for legal constructs such as the “average consumer” or “reasonably well-informed and reasonably observant internet user”. AdWords are an ordinary consumer service, the court found, therefore the judge could reach a conclusion from his own experience without evidence from consumers.
In his ruling today Arnold J was left to determine whether there had been trademark infringement “in context from the perspective of the reasonably well-informed and reasonably observant internet user, initially as at 6 May 2008”, the ruling stated.
The judge continued: “I must be careful not to consider the issues in this case from my own perspective, namely that of an experienced and technically literate internet user who knows precisely how Google AdWords operates and is aware of the issues.
“The average reasonably well-informed and reasonably observant internet user is not particularly technically literate, does not know precisely how AdWords operates and is not aware of the issues.”
He concluded that the “M&S advertisements which are the subject of Interflora’s claim did not enable reasonably well-informed and reasonably attentive internet users to ascertain whether the service referred to in the advertisements originated from [M&S or Interflora].
“On the contrary, as at 6 May 2008, a significant proportion of the consumers who searched for ‘interflora’ and the other signs, and then clicked on M&S’s advertisements displayed in response to those searches, were led to believe, incorrectly, that M&S’s flower delivery service was part of the Interflora network”.
The court will decide upon remedies later this year.
Connor said: “It seems prescient that in the week of the Chelsea Flower show, the court has decided in favour of Interflora, ruling that M&S infringed the ‘Interflora’ trade mark by using it to promote M&S flowers on the internet using the Google AdWords programme.”
Savvides said the retailer was “exploring the options going forward”.
For the claimant Interflora:
11 South Square’s Michael Silverleaf QC leading Simon Malynicz, instructed by Pinsent Masons partner Iain Connor
For the defendant M&S:
One Essex Court’s Geoffrey Hobbs QC and Emma Himsworth QC, instructed by Osborne Clarke partner Theo Savvides