Flower Power: High Court Rules That Marks & Spencer Did Infringe Interflora’s Trade Mark

The High Court has handed down judgment in the long-running case of Interflora Inc v Marks and Spencer plc [2013] EWHC 1291 (Ch), May 2013. The case concerned the unauthorised use of third-party trade marks as advertising keywords through Google's AdWords service.

The dispute arose after M&S bought multiple keywords on Adwords which contained the trade mark Interflora, the name of the world's largest flower delivery network. Google Adwords displays sponsored advertisements (positioned in a specific part of their search results page) in response to a user searching for particular keywords. Keywords are available to be purchased and, where there are multiple purchasers, an auction is held to determine who will benefit from the most attractively-positioned advert. Google generates revenue by taking a fee from the advertiser on a "cost-per-click" basis.

After M&S purchased various Interflora keywords, users searching for Interflora were initially presented with a link to M&S's website, where it was possible to order flowers for delivery. Interflora brought proceedings on the basis that M&S had infringed their trade mark under Articles 5(1)(a) and 5(2) of the Trade Marks Directive (now replaced by consolidated Directive 2008/95/EC) and Articles 9(1)(a) and 9(1)(c) of the Community Trade Mark Regulation (now replaced by 207/2009/EC).

The Verdict

The aforementioned Articles 5(1)(a) and 9(1)(a) provide that the owner of a registered trade mark may prevent third parties from using in the course of trade any sign which is identical to his mark in respect of goods or services which are identical to those for which the mark is registered. Arnold J held that M&S had indeed infringed the Interflora mark under Article 5(1)(a) because their adverts did not enable "reasonably well-informed and reasonably attentive internet users" (at least not without difficulty) to determine whether the services offered in the advert were originating from Interflora or M&S. This was the case even though the adverts in question did not refer to Interflora in their text.

However, Interflora did not succeed in showing infringement under Articles 5(2) and 9(1)(c). In order to show infringement here, a claimant must establish that there has been at least one of three types of injury. These were set out by the European Court of Justice in the case of L'Oreal v Bellure as dilution (detriment to the distinctive character of the mark), tarnishment (detriment to the repute of the...