Keyword Advertising And Trademark Infringement

When considering the issue of keyword advertising and trade mark infringement, the importance of balancing the need to protect a reputable trade mark and fair competition is paramount.

On 22 September 2011, the Court of Justice of the European Union ("ECJ") handed down its preliminary ruling in Interflora Inc, Interflora British Unit v Marks & Spencer PLC, Flowers Direct Online Limited C-323-09.

This ruling comes two years after the High Court of Justice (England and Wales, Chancery Division) referred five questions concerning the unauthorised use of a mark by a competitor within an internet referencing service and a mere six months after Advocate General Jaaskinen's ("AG") opinion indicating that brand owners can, in certain circumstances, prevent keyword advertising. (This opinion was discussed in our Legal Brief, July 2011: Advocate General's opinion: Interflora Inc vs Marks & Spencer.)

As anticipated, the ECJ's decision broadly encompasses the AG's findings and as advocated by the AG, the ECJ has also emphasised balancing the need to protect a reputable trade mark while taking into account fair competition within the relevant sector when considering the use of trade marks in keyword advertising.

Background

Marks and Spencer PLC ("M&S") had purchased keywords for Google's AdWord paid referencing service. As a result, M&S adverts appeared under sponsored links when internet users searched terms including "interflora", "interflora flowers", "interflora delivery", "interflora.com", "interflora.co.uk" on Google. Although these adverts did not contain any references to the INTERFLORA mark and its services per se, they did offer internet users M&S flower delivery services. Consequently, Interflora instituted trade mark infringement proceedings against M&S.

The ECJ's findings

The High Court referred to the ECJ the question of the interpretation of rights conferred to all trade marks under Article 5 (1) of the First Council Directive 89/104 EEC and Article 9 (1)(a) of the Council regulation (EC) no. 40/94 which affords the exclusive right to a proprietor of a trade mark to prevent the unauthorised use of a sign, that is:

1. identical to a registered trade mark and used in respect of identical goods and services for which the mark is registered;

2. similar to a registered trade mark and is used in respect of similar goods and/ or services where confusion and/or association with the registered trade mark and proprietor is likely.

Applying its...