Keywords That Infringe – Interflora v M&S

Interflora Inc & Anor v Marks and Spencer Plc & Anor [2013] EWHC 1291 (Ch)

On 21 May, Mr Justice Arnold handed down a lengthy judgment in the long running action between Interflora and M&S. This dispute had been running since 2008 after M&S purchased several keywords from the Google AdWords service (including "Interflora") that read onto Interflora's registered trade marks (UK Trade Mark No. 1329840 INTERFLORA and CTM No 909838 INTERFLORA). This purchase followed Google changing their policy in relation to keywords and trade marks, in the UK, whereby it ceased blocking the purchase of keywords after receipt of a notification that such a word had been registered as a trade mark.

M&S used such keywords in conjunction with advertisements for its own flower business. After a reference to the CJEU, interim hearings regarding the admissibility of evidence obtained from so-called witness gathering exercises and two associated appeals to the Court of Appeal, the judge found that M&S had infringed Interflora's registered trade marks under Article 5(1)(a) of Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks and 9(1)a of Regulation 40/94/EC of 20 December 1993 on the Community trade mark.

While the judgment sets out a great deal of factual background to the matter, and presents a thorough overview of the law in this area, the points of practical interest for rights holders and indeed those considering the use of keywords for which there is a related registered trade mark, are to be found within the final few pages of the judgment where the law, in particular the answers from the CJEU to the several questions that had been posed of them in this case, is being applied to the facts.

In this regard, the key issue that the judge had to grapple with was whether M&S's use of p1 20 June 2013 the signs (the keywords complained of) adversely affected the origin function of the Interflora trade marks, and in this regard, whether the M&S advertisements did not "enable reasonably well-informed and reasonably observant internet users, or enable them only with difficulty, to ascertain whether M&S's flower delivery service originates from Interflora, or an undertaking economically connected with Interflora, or originates from a third party".

In answering this question, the judge considered three factors.

1 - Whether the reasonably well-informed and reasonably observant internet user is deemed...

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