Advocate General's Opinion: Interflora Inc vs Marks & Spencer

Does use of a keyword that corresponds to a trade mark by advertisers on an internet search engine constitute "use" of a trade mark and if so can the trade mark owner prohibit such use?

Advocate General Jääskinen's (AG) opinion in relation to Interflora Inc, Interflora British Unit v Marks & Spencer PLC, Flowers Direct Online Limited C-123/09 delivered on 24 March 2011 indicates that brand owners can, in certain circumstances, prevent keyword advertising.

The opinion has been widely reported in the media and brand owners are therefore hopeful that the opinion will be followed by the European Court of Justice (ECJ). Although theAG's opinions are not binding on the ECJ they are persuasive and have reportedly been adopted in at least 80% of the cases before the full court.

The High Court of Justice (England and Wales, Chancery Division) had previously opted to stay proceedings in the matter and instead referred it to the ECJ in July 2009.

Initially ten questions were referred to the ECJ. However questions five to ten were withdrawn by the High Court following the Google France and Google judgments (joined cases C-236/08 to C-238/08). The remaining four questions were consequently divided into two groups by the AG:

Rights conferred to all trade marks under Article 5(1) of the First Council Directive 89/104 EEC (Directive) and Article 9(1)(a) of Council Regulation (EC) No. 40/94 (the regulation). Protection of trade marks with a reputation under Article 5(2) of the Trade Marks Directive 89/109. Both the Directive and the regulation are applicable to member states of the European Economic Community.

In his analysis, the AG states that while these questions are subject to examination in light of Article 5(1)(a) and 5(2) of the Directive, the interpretation is equally applicable to Article 9(1)(a) and (1)(c) of the regulation.

Facts

In past cases aggrieved parties have chosen to institute proceedings against Google for its sponsored link and competitor bidding practices. However in this instance, Interflora Inc instituted trade mark infringement proceedings against Marks and Spencer (M&S) directly.

The applicant, Interflora Inc, is a US corporation with a worldwide flower delivery network and is the proprietor of trade mark registrations on a global scale for the INTERFLORA mark in various classes including class 31 (plants and flowers), class 35 (advertising services), and class 39 (transportation of flowers and gifts).

The respondent is M&S a...