The Court of Appeal has allowed Marks and Spencer's appeal in part and remitted the case to the High Court for a retrial of the infringement claims under Article 9(1)(a) of the Community Trade Mark Regulation (Interflora Inc. and Others v Marks and Spencer plc  EWCA Civ 1403). The Court made a strong statement in relation to initial interest confusion, finding that it was unhelpful to import this concept into EU trade mark law.
- Keyword advertising: This is not inherently or inevitably objectionable from a trade mark perspective – the Court of Appeal reiterated this point in strong terms.
- Initial interest confusion: The Court of Appeal found that Arnold J was wrong in his approach and that it is not helpful to import the doctrine of initial interest confusion into EU trade mark law. The court found that it is "an unnecessary and potentially misleading gloss" on the tests that the CJEU has previously articulated in case law in determining whether an accused sign has an adverse effect on the origin function of a trade mark. Initial interest confusion should perform no part of the analysis of the national courts in claims of the kind before the Courts in this case.
- Average consumer: A finding of infringement can be made even if many consumers (of whom the average consumer is representative), would not be confused.
- Onus of Proof: In proceedings involving Article 9(1)(a) of the Regulation, the onus is on a trade mark owner (and not the third party advertiser) to show that the advertisement complained of does not enable informed and reasonably attentive internet users to ascertain the origin of the goods.
- Negative matching: A failure to negative match can constitute infringing use of a competitor's trade mark within the meaning of Article 9(1) of the Regulation, with the Court of Appeal upholding Arnold J's judgment on this point. Whether it constitutes infringing use will depend upon the assessment of the judge of all relevant circumstances, including length of time which the impugned activities have been carried on.
The case is about keyword advertising and the display on the internet of Marks and Spencer ("M&S") advertisements in response to the search term 'interflora'. Interflora was successful in its trade mark infringement case against M&S at first instance under Article. 9(1)(a) of the Regulation with Arnold J handing down his judgment in May 2013 (with an additional judgment on the scope of the injunction handed down in June 2013). For further detail on the first instance judgments, please see our previous e-bulletins here and here.
M&S appealed the both of the judgments of Arnold J and the appeal was heard in July 2014. The Court of Appeal summarised the 5 main appeal issues as follows:
- the average consumer;
- the onus of proof;
- initial interest confusion;
- procedural irregularities; and
- injunctive relief and negative matching.
Court of Appeal's decision
The Court found that a number of errors had been made by the Judge and it was far from confident that the Judge would have come to the same conclusion, had he not made these same errors. The Court of Appeal gave "anxious consideration" to the possibility of simply determining the issue of infringement themselves from a costs and time savings perspective but with regret, decided that this was something it could not do. It had not heard the evidence or been taken to all of the documents, so the case had to be remitted for a retrial. The Court said that it found limited consolation in the thought that such a retrial should now be relatively straightforward.
1. Average Consumer
This case posed the question whether the advertisements in issue did not enable reasonably well informed and observant internet users (or enabled them only with difficulty) to ascertain whether the goods and services as advertised, originated from Interflora or an undertaking economically linked to Interflora, or, on the contrary, from M&S. The Court found that the Judge was entitled to have regard to the effect of the advertisements upon a significant section of the relevant class of consumers and he was not barred from finding infringement because the majority of consumers were not confused. In the context of internet advertising, the average consumer (who is reasonably well informed and reasonably observant and circumspect) and the reasonably well informed and reasonably circumspect internet user are the one and the same. The average consumer is not a statistical test – the national court must exercise its own judgment in accordance with the principles of proportionality.
2. Onus of proof
Arnold J wrongly held that the onus lies on the third party advertiser to show that the use of the sign in context is sufficiently clear that there is no real risk of confusion by the average consumer as to the origin of the advertised goods. The Court found that the onus is on the trade mark owner to show that the advertisement complained of does not enable informed and reasonably attentive internet users to ascertain if the goods in the advertisement originate from the trade mark owner, or an economically linked undertaking, or from a third party. The error in the Judge's reasoning was that he wrongly elided the burden of proof in legal proceedings with the need in practice for third party advertisers to craft their advertisements with appropriate clarity. One does not follow from the other. Although advertisers select keywords and decide how to use them, this does not mean that in infringement proceedings, the advertiser also has the burden of ensuring that its advertisements make it clear that the goods or services do not originate from the trade mark owner, or adversely affect any other function of the mark.
The Judge's approach to the burden of proof has likely influenced his assessment of all of the evidence (including the evidence discussed in section 4 below), which consequently affected all of his findings in the case.
3. Initial interest confusion
This expression derives from US trade mark law and is a highly controversial type of confusion which arises when a consumer is confused as to the origin of goods or services prior to the purchase of the product or service (and in particular, confusion arising from the use of a sign in promotional materials). In the High Court, Arnold J accepted that initial interest confusion as envisaged under Article 9(1)(b) of the Regulation (and as previously found in the Och-Ziff case by Arnold J) is equally relevant to show an adverse effect on the origin function of the trade mark for the purposes of Article 9(1)(a) of the Regulation. The Court found that it was not helpful to seek to import the doctrine of initial interest confusion into EU trade mark law, at least so far as it applies to the use of a sign which is the same or similar to a trade mark as a keyword in an internet referencing service, and it has the potential to positively mislead. The CJEU has already enunciated the test to be applied in determining whether the accused sign has an adverse effect on the origin function of a trade mark in Google France (C-236-08 to C-238/08) and again inBergSpechte (C-278/08) and Portakabin C-558/08). The question is whether an advertiser has enabled the average consumer to ascertain the origin of the advertised goods in order to make an informed decision. The Court emphasized that it was not the duty of such advertisers to avoid confusion.
4. Procedural irregularities and errors in evidence
The Court considered the admissibility of evidence in various academic papers and the reliance placed upon those papers and the evidence of Mr Rose and Mr Pandya by the Judge. Mr Rose is an employee of the online digital marketing company which managed paid search advertising strategies for Interflora in the UK and he provided witness statements on behalf of Interflora. Mr Prandya was the co-author of an Experian Hitwise report commissioned by Interflora and was cross-examined on the report at trial.
Arnold J had taken the view that the academic papers were relevant and should be admitted in the interests of justice, despite the fact that they were served on the eve of trial under a Civil Evidence Act Notice. On the issue of the academic papers put forward in support of Interflora's case, the Court found that this was a reasonable exercise of the Judge's discretion and it was not one with which the Court of Appeal could properly interfere.
Arnold J appeared to have placed considerable weight on Mr Rose's evidence even though he had ruled at trial that he would attach no weight to this evidence and as a result, Mr Rose was not cross-examined. This seemed to be at odds with Arnold J's judgment where he stated that Mr Rose's views represented "an informed assessment from someone whose job it is to have an informed assessment on this subject". On the issue of Mr Rose's evidence, the Court found that the Judge fell into error and should not have attached any weight to the opinion and assessment of Mr Rose at the trial. On the issue of Mr Prandya's evidence, the Court of Appeal found that the Judge erred in giving Mr Prandya's evidence the weight that he did. The Judge should have explained his reasons for rejecting the evidence of Mr Prandya and it was incumbent on him to do so.
5. Scope of injunction
In Arnold J's second judgment about the scope of injunction against M&S, he considered the role of negative matching in the Google AdWords process. Interflora complained that M&S had bid upon generic flower related terms without negative matching the word 'interflora'. Arnold J found that a failure to negative match could constitute infringing use of a competitor's trade mark.
On appeal, M&S argued that the failure to negative match the word 'interflora' pre-supposes the existence of a legal duty or obligation which required an advertiser to opt in or out of Google's negative matching facilities (when no such duty exists). Moreover, M&S had not selected 'interflora' as a keyword in this process and such selection is an essential requirement of liability. The Court was not convinced by these arguments and M&S did not succeed in its appeal on negative matching issues. The CJEU's decision in Google Francewas applied and the Court found that the choice and selection by a trader of a generic term as a keyword cannot be considered in isolation and as an activity, separate and distinct from the Google algorithms. Account must be taken of the opportunity available to the trader to negative match. The Court came to the conclusion that the bidding by M&S on generic flower terms, without negatively matching the sign 'interflora' may be characterised as use within the meaning of Article 9(1) of the Regulation.
M&S complained about the geographical scope of the injunction ordered by Arnold J, which applied to all of the EU. The Court found that Arnold J had applied the correct test as set out by the CJEU inDHL Express France SAS v Chronopost SA (C-235/09) and it was correct that an injunction to prevent infringement of a Community trade mark should extend to all of the EU in these circumstances.
Interflora and M&S have been embroiled in epic litigation on this case since 2008. It seems incredible that the matter is to go back down to the High Court for a retrial on the fundamental trade mark infringement questions and remains to be seen if such a retrial will indeed be as straightforward as the Court of Appeal seem to think that it will be.