The Advocate General of the Court of Justice of the European Union (CJEU) has given an opinion which suggests he thinks Marks & Spencer infringed Interflora's trade mark by using it as a Google AdWord. This was because Marks & Spencer's use had led the average consumer/internet user to associate the triggered sponsored result with the Interflora flower delivery network.

However, if this opinion is followed wholeheartedly by the CJEU it will not be welcomed by many trade mark owners because:

  1. it indicates that where the use of the keyword does not result in a risk of confusion, infringement cannot be established under the extended protection for marks with a reputation unless the mark is used visibly in the triggered ad/sponsored result; and
  2. it offers possible guidance to those wishing to use the trade marks of their competitors as internet keywords on how to do so without infringing.

Although the CJEU has once already chosen not to follow an Advocate General's opinion in an AdWords case (joined Cases C 236/08 to C 238/08 Google France and Google), all its earlier AdWord decisions which are widely seen as favourable to trade mark owners, have proved controversial.

Background

Interflora claimed that Marks & Spencer was liable for infringing its word trade mark by purchasing "Interflora" as a Google AdWord and benefitting from the sponsored search results it obtained as a result. Significantly there was no visible use of the Interflora mark within the displayed text of any of the sponsored search results in issue. An example of one of the triggered sponsored search results follows:

'M&S Flowers Online

www.marksandspencer.com/flowers

Gorgeous fresh flowers & plants. Order by 5pm for next day delivery.'

The UK High Court judge (Arnold J) decided to refer several questions to the CJEU. He later decided to continue this reference in relation to some of the questions he had referred, despite the guidance which had by then been provided by the CJEU in the Google France AdWord cases. This was primarily because the present case, unlike the earlier AdWord cases, includes an allegation of infringement against the actual advertiser/purchaser of the internet keyword (i.e. Marks & Spencer) under Article 5(2) in addition to a claim under Article 5(1) of the Trade Marks Directive.

Risk of confusion and infringement under article 5(1)(a)

In the earlier AdWord cases the CJEU had confirmed there would be a likelihood of harm to the origin distinguishing function of the mark where the triggered search result "does not enable an average internet user, or enables said user only with difficulty, to ascertain whether the goods or services referred to in the ad originate from the proprietor of the trade mark or an undertaking economically connected to it or from a third party".

Critical to understanding the Advocate General's opinion is his view that the Interflora trade mark has gained a "secondary meaning" denoting a "commercial network of florists providing a certain type of delivery service". Therefore, in the Advocate General's opinion an association between the trade mark and a delivery service of flowers provided by Marks & Spencer "is possible and even likely in the mind of an average consumer seeking information about such services in the internet" when faced with a sponsored search result such as that shown above. It created a suggestion that Marks & Spencer is part of the Interflora network. Such a use of the Interflora trade mark could therefore be prohibited.

This finding, that the sponsored result did create an association with Interflora, is a finding of fact which the CJEU is not entitled to make. It is therefore unsurprising that the suggested answer put forward by the Advocate General is more abstract; "An error concerning the origin of goods or services arises when the competitor's sponsored link is liable to lead some members of the public to believe that the competitor is a member of the trade mark proprietor's commercial network when it is not. As a result of this the trade mark proprietor has the right to prohibit the use of the keyword in advertising by the competitor in question"

However, the Advocate General also suggested that a risk of confusion could be negated where internet keyword use of a competitor's trade mark was made by:

  1. use of wording in the sponsored search result which "effectively dissociates the advertiser" from the trade mark (an example would be legitimate comparative advertising); and
  2. the surrounding circumstances; for example where the trade mark, which is used as the internet keyword, is not visible in the sponsored result the Advocate General thought that in "many" cases (but not this one) "display of commercial alternatives does not seem harmful for the origin function of the trade mark because the appearance of an ad in a sponsored link following the typing of a keyword identical with a trade mark does not create an association or a link between the trade mark and the good or the service promoted by the ad. There was even less likelihood of such an association where the sponsored ad related to different but related goods".

In respect of (b) above, it is not difficult to imagine some scenarios where it would be unlikely for an association to arise. For example if a Pepsi Cola sponsored search result was triggered by a search for "Coke" it is unlikely anyone would assume an association with Coca Cola. However the Advocate General's opinion was that there would not be any origin harm in "many" cases. It is hard to reconcile this general wording with the earlier AdWord judgments of the CJEU. It is likely to have stemmed from the Advocate General's view that "one of the blessings of the internet is...that it greatly enhances consumers' possibilities to make enlightened choices between goods and services".

Unfortunately it is probable that the CJEU will, at least in this case, avoid providing further guidance as to when, in the absence of dissociative wording, the surrounding circumstances will negate any association arising from internet keyword use.

Extended protection – infringement under article 5(2)

The Advocate General referred back to the CJEU's earlier AdWord cases when considering the extended protection for marks with a reputation offered by Article 5(2). He noted that "the Court did not condemn keyword advertising using third party trade marks as such but linked the question of its permissibility to the contents of the ad displayed in the sponsored link".

If the conjunction of a keyword and a sponsored result would "as such" amount to dilution then any trade mark would be blurred if it were chosen as an internet keyword leading to a sponsored result of an undertaking other than that of the trade mark proprietor. This would unduly restrict competition.

Similarly any advantage taking of the reputation of a mark was not unfair if it was with "due cause". In the Advocate General's view, in the case of identical or similar goods or services "the purpose of presenting a commercial alternative...should count as due cause in the context of modern marketing relying on keyword advertising on the internet. Otherwise keyword advertising using well-known third party trade marks would be as such prohibited free-riding. Such a conclusion cannot be justified in view of the need to promote undistorted competition and the possibilities of consumers to seek information about goods and services".

Accordingly, the Advocate General's suggested answers in respect of 5(2) infringement (and its equivalent under the Community Trade Mark Regulation) were that:

"... use of a sign as a keyword in an internet referencing service in relation to goods or services identical to those covered by an identical trade mark with a reputation also falls within the scope of application of those provisions and it can be forbidden by the trade mark owner when

  1. the ad shown as a result of the internet user having typed as a search term the keyword identical with a trade mark with a reputation mentions or displays that trade mark; and
  2. the trade mark
    1. is either used therein as a generic term covering a class or category of goods or services; or
    2. the advertiser attempts thereby to benefit from its power of attraction, its reputation or its prestige, and to exploit the marketing effort expended by the proprietor of that mark in order to create and maintain the image of that mark".

The Advocate General did not specifically indicate whether or not "invisible" use of an internet key word, to present commercial alternatives, which caused a likelihood of confusion would also be detrimental to the distinctive character of the mark and be without due cause. In other words, where such invisible use led to origin function harm and infringement under Article 5(1)(b) would it also lead to infringement under Article 5(2)? Presumably from the generality of his suggested answers and his insistence on visible use for Article 5(2) infringement, the answer to this must be "no"!

Furthermore, the CJEU did not deal with alleged blurring or unfair advantage taking in Google France or the other AdWord cases. Rather it held that the advertising function of a trade mark (which was also protected by Article 5(1)(a)) was not usually harmed by internet keyword use. However the Advocate General's insistence on visible use for infringement at least where the use does not lead to a risk of confusion may be adopted now by the CJEU as a useful compromise between the competing interests.

Comments

The EU Commission had taken the opportunity of this dispute to raise certain criticisms concerning the CJEU's judgment in the L'Oreal v Bellure judgment and the protection it there confirmed was provided to the functions of a trade mark other than the origin function. Although the Advocate General indicated that the CJEU did find itself in "a rather challenging position" he did not need to dwell on these issues in the circumstances of this case. He did however note that "these issues partly stem from the problematic drafting of Article 5 of Directive 89/104. Therefore the actual situation might be better remedied by appropriate legislative measures than a reorientation of case-law".

In fact the Advocate General arguably went on to further extend the scope of infringement under Article 5(2). He did this by acknowledging, for the first time at European level, that "degeneration" (i.e. the trade mark becoming a generic term or a common noun) is a form of harm which is detrimental to the origin distinguishing function of a mark. This was a slightly different type of harm to the more common form of dilution (where the mark is used for so many other goods or services that it is "watered down" and becomes "banal"). The Advocate General confirmed that, where established, protection from both forms of distinctiveness harm is available under the Trade Marks Directive and Community Trade Mark Regulation.

Degeneration occurs when the mark is used, without consent, by others because of "the absence of an alternative generic term denoting to the class of products of which the only or the most important representative is the good or service covered by the trade mark, or from the overwhelming success of a certain brand in a certain class of products. Degeneration especially threatens trade marks that cover a new innovation or those that are well known in specific fields".