In yet another trade mark dispute resulting from Google's AdWord service, the UK High Court has decided to refer a "comprehensive" list of questions to the European Court of Justice (ECJ) before the hearing of the main trial. Interflora claim that Marks & Spencer is liable for infringing its trade mark by purchasing Interflora as a Google AdWord, and benefitting from the sponsored search results it obtained as a result. Although Google is not a party to this legislation, Interflora has alleged that Marks & Spencer is jointly liable for infringements by Google as well. Significantly there was no visible use of Interflora within the displayed text of the sponsored search result.
Although there are several references pending before the ECJ already concerning the use of trade marks as keywords, Arnold J decided not to agree to Marks & Spencer's request for a stay pending the outcome in these existing references. This was because the present case concerned issues not covered by the existing references and there was a possibility that guidance would not be forthcoming from the ECJ if the existing references settled. The additional issues raised by this case included
- the allegation of infringement against an advertiser/purchaser of a keyword under article 5(2) (in addition to a claim under article 5(1)) and
- the allegedly infringing acts of Google were not limited to the presentation of the sponsored search result triggered by the web surfer's use of the mark as a search term but included other acts as specified below.
The allegedly infringing acts were listed as the following -
Google's acts of
- presenting a search results page containing Mark & Spencer's sponsored link in response to the entering by the user of one of the Interflora marks;
- presenting the Interflora marks within search bars located at the top and bottom of search results pages that contains Marks & Spencer's sponsored link;
- presenting the Interflora marks within the summary of the search results (for example, "Results 1-10 of about 1,170,000 for Interflora (0.21 seconds)" when the search results page contains Marks & Spencer's sponsored link;
- presenting the mark INTERFLORA by way of an alternative suggestion when the user has entered a sign similar to it (for example, "Did you mean Interflora?" when the search term entered by the user was "inteflora"); and
- adopting the user's use of the Interflora marks when presenting the user with search results pages containing Marks & Spencer's sponsored link.
Marks & Spencer's acts of:
- selecting the Interflora signs as keywords;
- nominating the Interflora signs as keywords;
- associating those keywords with Marks & Spencer's URLs;
- setting the cost per click in relation to those keywords;
- scheduling the timing of the display of Marks & Spencer's sponsored link; and
- using the Interflora marks in business correspondence relating to the invoicing and payment of fees and/or the management of an AdWords account.
A further hearing was held on 1 July 2009 to consider the wording of the questions to be referred as the parties were unable to agree on them. However, the judge's final decision as to the questions' wording is still awaited. It appears likely from the main judgment that the following issues may be covered:
- Whether any of the acts of Marks & Spencer (as specified above) amounted to use of the Interflora marks "in relation to" Marks & Spencer's goods or services as required for infringement under the Trade Marks Directive.
- Whether any of the acts of Google (as specified above) amounted to use of such marks "in relation to" Marks & Spencer's goods or services as required for infringement under the Trade Marks Directive. Note that Google was not party to the proceedings but it was claimed that Marks & Spencer was jointly liable for the infringements of Google.
- If such use could be shown to be detrimental to the essential function of the mark, could any such uses fall within the Article 5(1)(a) of the Trade Marks Directive and Article 9(1)(a) of the Regulation?
- If such use did not harm the essential function of the mark, would damage to the reputation of the mark be sufficient for it to fall within the scope of Article 5(1)(a) of the Trade Mark Directive? Note that the ECJ's guidance in the L'Oreal v Bellure case has indicated that Article 5(1)(a) protects against harm to the reputation of a mark as well as against harm to its essential function.
- If such use does not fall within Article 5(1), did such use fall within Article 5(2) of the Trade Marks Directive if it could be shown to have resulted in detriment to the reputation or distinctive character of the mark or unfair advantage to the user?
- If it could be established that such use would result in a real risk of the mark becoming a generic of flower delivery businesses in the future, would this amount to detriment to the distinctive character of the mark?
- In respect of Google's acts (as specified above) did any of Articles 12, 13 or 14 of the E-Commerce Directive provide it with a defence?