M&S's use of Google AdWords infringes Interflora's trade mark

By Inbali Iserles

The High Court of England and Wales has handed down its long-awaited judgment in Interflora and others v Marks & Spencer plc and others. Applying the 2011 decision of the Court of Justice of the European Union (ECJ), Mr Justice Arnold found that M&S's adverts ran the risk of leading the "average reasonably well-informed and reasonably attentive internet user" to believe that M&S might be a member of Interflora's network. On that basis, he ruled in favour of Interflora, finding that the adverts amounted to trade mark infringement due to confusion as to the origin of the goods and services. However, he ruled in favour of M&S in finding there was no adverse effect on the reputation of Interflora's trade mark, no dilution to the distinctiveness of its mark and no evidence that M&S had taken unfair advantage of the mark's distinctive character or reputation without due cause.

Use of Google AdWords

The case concerned M&S's use of Google's paid referencing service, AdWords, in relation to M&S's flower delivery service. M&S selected "Interflora" and variants of this term as keywords so that when a member of the public conducted a Google search for "Interflora", the search produced an advert for M&S's flower business above Google's "natural" search results. The text of the advert did not refer to "Interflora".

ECJ decision applied at High Court

In its 2011 decision, the ECJ recognised that keyword advertising could promote competition. However, it found that use of a third party's trade mark as a Google AdWord could constitute trade mark infringement if it could lead the relevant public - for these purposes, "reasonably well-informed and observant internet users" - to believe, erroneously, that the advertiser is connected to the trade mark owner. The ECJ's decision left pundits and practitioners divided as to who had won, with both Interflora and M&S claiming victory.

On applying the ECJ's decision, Arnold J found that the relevant public was not particularly technically literate or familiar with how AdWords operates - either in 2008, when the alleged infringement began, or even today. Given that Interflora is an association with a large and diverse number of members, such a user could be led to believe that M&S was part of Interflora's network as a result of its use of "Interflora" as a keyword.

Confusion as to origin

M&S appear to have run into difficulty not because they used a competitor's trade mark as an AdWord per se but because of the nature of that competitor's business as a membership organisation. Based on Arnold J's reasoning, it is possible that had M&S instead purchased as a keyword the brand name of a singular and well-known entity, the relevant internet user would not have been confused as to origin. The case turned on the knowledge and technical literacy of the "average reasonably well-informed and reasonably attentive internet user" - this new man on the Clapham Omnibus tapping away at his Galaxy S4. Given that his technical literacy is set to improve as internet penetration and e-commerce hit record highs, it may be that even a case on similar facts would be decided differently in future. However, for now, the case serves as a salutary warning to businesses that use of a competitor's trade mark as a keyword runs the risk of infringing their rights. Any such use should be carefully considered in the light of this decision.

Please click on the links below for the other articles in the August 2013 Technology & IP newsletter

• High Court accepts claim to restrain Chobani from passing off its American-made yoghurt as 'Greek yoghurt'
• FRAND determination stay agreed for IPCom v Nokia trial
• EU Commission intervenes in patent wars: the end of injunctive relief for infringement of "essential" patents?
• IP Bill to reform design rights and bring in Unified Patent Court
• Whose right is it anyway? Copyright reforms introduced by the Enterprise and Regulatory Reform Act 2013
• New Commission Regulation seeks to speed up broadband roll out
• Media convergence in the internet age