Applying a ruling of the Court of Justice of the European Union, the High Court of England and Wales has held in Interflora Inc and another v Marks and Spencer plc and another  EWHC 1291 (Ch) that Marks & Spencer’s unauthorised use of INTERFLORA and variations thereof as advertising keywords on the Google Adwords referencing service infringed Interflora’s trade marks.
Both parties provide online flower delivery services. Marks & Spencer (M&S) had paid Google to display advertisements for its flower delivery service on the search engine results page in response to searches for INTERFLORA and similar terms (the signs). Interflora alleged that M&S infringed its Community and UK trade marks for INTERFLORA under Article 5(1)(a) of the Trade Marks Directive (89/104/EEC) and Article 9(1)(a) of the Community Trade Mark (CTM) Regulation (207/2009/EC), pursuant to which trade mark owners can prevent third parties from using identical signs in relation to identical goods or services.
It was common ground that the signs were identical to Interflora’s trade marks. Interflora claimed that the use of the signs by M&S affected, or was liable to affect, the origin and investment functions of its trade marks.
Arnold J concluded that the investment function of the marks was not adversely affected as there was no evidence that M&S’ keyword advertising impacted the reputation of Interflora’s marks such as to damage Interflora’s image.
Arnold J established that the origin function was adversely affected by keyword advertising if the advertisement did not enable reasonably well-informed and observant internet-users, without difficulty, to ascertain whether the goods or services originated from the trade mark owner or from a third party. The onus is upon the advertiser to ensure the advertisement enables such users to ascertain its origin without difficulty. If the advertisement causes a significant proportion of the relevant persons to believe the advertised goods or services are connected to the trade mark owner, this establishes an adverse effect. In this case, it was relevant whether or not the reasonably well-informed and observant internet-user was aware that M&S’ flower delivery service was not part of Interflora’s network and whether or not M&S’ advertisements enabled users to ascertain this.
Concluding that M&S had infringed Interflora’s trade marks, Arnold J noted that he was not satisfied that the reasonably well-informed, observant internet-user would have been aware that M&S’ flower delivery service was not part of Interflora’s network. Further, Arnold J found that M&S’ advertisements contained no information which enabled users to determine that its flower delivery service was not part of the Interflora network. He considered it relevant that M&S had achieved much better results by bidding on INTERFLORA-related keywords than on other brands, concluding that the only credible explanation was the difference in nature of the brands. Arnold J held that a significant proportion of consumers searching for INTERFLORA and other signs, who clicked on M&S’ advertisements, were led to believe that M&S’ flower delivery service was part of the Interflora network, causing an adverse effect on the origin function of Interflora’s trade marks.
The judgment confirms that use of third party trade marks as advertising keywords can constitute trade mark infringement, even though the sale of such trade marks is not blocked by Google in the United Kingdom and Ireland. It is feasible that comparative advertising laws may be used as a defence in the future should others decide to imitate what was shown in this case to be a highly successful strategy for M&S.