Interflora v Marks & Spencer: War of the Roses?

September 20, 2013

After several years of protracted litigation between Interflora and Marks and Spencer, the English High Court has issued judgment in favour of Interflora as trademark owner. The well known flower delivery network in the UK, Interflora operates a website for placing flower delivery orders using keyword advertising via Google. When Google changed its policy allowing advertisers to bid for and purchase keywords, M&S purchased the keyword “Interflora” from Google and used it to display advertisements for its own flower delivery service when an internet user searched the word “Interflora” on Google. Interflora protested against M&S using its name as a keyword and brought a claim for infringement of its trade mark.

Article 5(1)(a) of the European Trade Mark Directive provides that having a registered trade mark shall entitle the owner to prevent third parties, who do not have the owner’s prior consent, from using in the course of trade “any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered”. M&S was using the trademark in the identical course of trade of a flower delivery service. The High Court determined that the main issue in the case turned on whether a “reasonably well informed and reasonably observant” internet user was deemed to be aware that M&S’s flower delivery service was not part of the Interflora network, and if not, whether M&S’s advertisement on Google allowed such internet users to deduce this. The High Court held that adverts displayed by M&S in response to searches for Interflora’s trade marks did not enable the reasonably well informed and reasonably observant internet user, or enabled him only with difficulty to ascertain whether the goods referred to originated from Interflora or from a third party. It was more likely that the internet user would believe that M&S’s flower deliver service was part of the Interflora network.

This decision followed the responses previously received from the European Court of Justice confirming that use of third-party marks as keywords in online searching cannot constitute trademark infringement, unless it has an adverse effect on the functions of the trademark. The recent decision is of particular relevance to businesses as it highlights that the use of a competitor’s trade mark as a keyword can result in trade mark infringement where there is room for confusion as to the origin of goods or services.

The decision came down against M&S in large part because the Court was looking at the facts of the case from the point of view of a reasonably well informed and reasonably observant user. A significant percentage of internet users are unable to distinguish between organic and sponsored results from search engines. These users do not appreciate that adverts are triggered by keyword search terms. As internet users become more knowledgeable and begin to understand how keyword searching operates and become more familiar with sponsored links it may become more difficult to pursue infringement actions on these grounds.

However, it is of note to business owners that they can and should limit their liability and exposure to risk by ensuring that the advertisement makes clear that the goods and services concerned originate from a competitor. Keyword advertisers should consider revisiting their online advertising plans and procedures to ensure that their sponsored links and advertisements that use keywords that are identical to competitors’ trademarks expressly state that they are not affiliated with their competitors.

For further information on trade marks and other intellectual property related queries please contact our litigation team

Please note: The content of this article is for information purposes only and further advice should be sought from a professional advisor before any action is taken.