Court Of Appeal Restricts The Use Of Witness Gathering Exercises In Trade Mark Infringement Cases

Marks & Spencer plc v (1) Interflora Inc & Anor [2012] EWCA Civ 1501 The Court of Appeal has provided important guidance that will continue the trend of restricting the use of surveys and evidence from witnesses who responded to surveys in trade mark infringement cases. This should simplify the way that cases need to be prepared, significantly reducing the costs of trade mark enforcement.

Background

The dispute arose in the well-known litigation between Marks & Spencer ("M&S") and Interflora regarding the purchase by M&S of the INTERFLORA trade mark as a Google AdWords keyword. This resulted in the M&S "sponsored link" advertisement appearing whenever a user searched in Google for "Interflora". In our previous publication "Who will come up smelling of roses?", we reported on the decision of the Court of Justice of the European Union ("CJEU") that use of a trade mark as a keyword could be prevented if it was liable to adversely affect one of the functions of the trade mark (the essential origin function and those regarding quality, communication, investment and advertising). However, trade mark infringement would only occur if "reasonably well-informed and reasonably observant internet users" could not easily grasp the difference between the keyword advertiser and the trade mark owner.

In June this year, Arnold J gave permission for Interflora to adduce, in its trade mark infringement claim, evidence of witnesses who had responded to a survey, even though the survey itself wasn't...