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...