Within the last 10 years there have been a number of decisions handed down by the European Court of Justice (“ECJ”) in relation to keyword advertising, which has led to guidance that has needed interpretation by national courts. Most recently, after such interpretation, the Court of Appeal remitted the long-running Interflora Inc v Marks & Spencer Plc case to the High Court for retrial following a successful appeal from Marks & Spencer (“M&S”) on a number of Justice Arnold’s findings, which followed a claim for trademark infringement by Interflora.
Sponsored keyword advertising enables an advertiser to influence online search results through the purchase of selected keywords. Sponsored advertising is prompted when a user searches the internet with a term that incorporates or corresponds to a third-party keyword. The benefit to organisations that pay for sponsored links is that they appear alongside highly ranked links according to the meta tags which appear in a website’s HTML source code. The use of trademarks as meta tags is captured within the ECJ’s trademark infringement guidance and it is on this point that the English Courts have been required to interpret the guidance in Interflora v M&S.
Interflora corporation is the owner of the trademark INTERFLORA which is a United Kingdom Trade Mark and Community Trade Mark. The brand is familiar to many and is the world’s largest flower delivery network. M&S are the well-known international retailer which has provided a flower delivery service via its website since around 2000. M&S purchased the keyword ‘interflora’ and a number of variants of it, however, M&S is not a member of the Interflora network.
M&S advertises its flower delivery service via the internet and uses Google AdWords so that when an internet user enters ‘interflora’ as a search term an M&S advertisement appears promoting its flower delivery service with a link through to the M&S website. Interflora sued M&S on the basis that advertising of this kind infringed their trademark even though the word ‘interflora’ does not appear in the M&S advertisement.
The Test and Findings in the High Court:
Before proceeding to trial, the Court of Justice of the European Union ruled that the key question for liability should be whether the reasonably observant and attentive internet user could ascertain whether the goods referred to in the advertisement came from Interflora as the trademark proprietor.
The High Court found M&S’s activities did infringe Interflora’s trademark as the advertisement did not enable reasonably well-informed and reasonably observant internet users to tell that the flower-delivery service offered by M&S did not originate from Interflora. In reaching the decision Justice Arnold held it was for M&S to prove that the advertisement was clear that the goods did not come from Interflora as trademark owner or an entity connected with them, this is known as the reverse burden of proof.
M&S appealed the decision on four grounds and in particular argued that putting the onus on them to prove its advertisement was clear as to the origin of the flowers advertised had been wrongly applied.
The Court of Appeal allowed M&S’s appeal and stated that Justice Arnold had incorrectly interpreted a previous decision in the Google France (joined Cases C-266 to 238/08), where the burden of proving an advertisement was clear as to the origin of the goods or services was on the potential trademark infringer where there is a likelihood of confusion and instead interpreting a decision in BergSpechte (C-278/08) stating if the ECJ had “intended a reverse burden of proof it would have said so”.
Interflora subsequently failed in their application to the Court for an interim injunction to prevent M&S from continuing to use of the keyword ‘interflora’, pending the trial which may be heard later this year.
This is a case which could have far reaching implications for businesses large and small in terms of brand protection and exploitation and, for the moment, it is a matter of “watch this space”.