Taking The St Michael? The CJEU Decision In Interflora v M&S

Marks & Spencer will be concerned that a finding of infringement may be the outcome when Interflora's claim against M&S for infringement of Interflora's mark INTERFLORA, used by M&S as a Google Adword, returns to the High Court following the CJEU decision handed down on 22 September. The CJEU has confirmed its decision from Google France that an advertiser who selects a competitor's trade mark as an Adword can be liable for "double identity" trade mark infringement if consumers are unable to determine whether the advertiser is economically linked to the trade mark owner. It has also held that, in this case, the prospects of such confusion were greater because of the nature of Interflora's business, being a network of separate and widely varying retailers. In addition, the CJEU has held, for the first time, that the use of a competitor mark as an Adword can also infringe by taking unfair advantage of the mark.

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In a decision of 22 September 2011, the Court of Justice of the European Union has confirmed its decision from Google France that an advertiser who selects a competitor's trade mark as an Adword can be liable for "double identity" trade mark infringement if consumers are unable to determine whether the advertiser is economically linked to the trade mark owner. It has also held that, in this case, the prospects of such confusion were greater because of the nature of Interflora's business, being a network of separate and widely varying retailers. In addition, the CJEU has held, for the first time, that the use of a competitor mark as an Adword can also infringe by taking unfair advantage of the mark.

Background

In addition to its natural search results, Google also offers a paid-for referencing service, known as "Adwords". Advertisers can bid on words, and if a user of Google searches for those words, then in addition to the "natural" search results, advertisers' sponsored links may be displayed in a separate box. The frequency with which an advertiser's sponsored link appears, and its position in the list of sponsored links, depends on the amount the advertiser bids for the Adword and the quality of the link. In this case, Marks & Spencer selected "Interflora" as an Adword, such that a sponsored link to M&S Flowers Online appeared prominently when users of Google searched for "Interflora". Interflora brought trade mark infringement proceedings, alleging that M&S's use as an Adword of their registered mark INTERFLORA, and similar words, constituted both "double identity" (identical mark, identical goods) infringement and also that M&S's acts took unfair advantage or, or were detrimental to, the distinctive character or repute of the INTERFLORA mark.

Questions referred to the ECJ

The High Court initially referred ten questions to the ECJ (as it then was). Following correspondence between the High Court and the ECJ, and the ECJ decision in the joined Google France cases (cases C-236/08, C-237/08 and C-238/08), six of these were withdrawn. The questions on which the CJEU has now ruled were: 1. Where a trader which is a competitor of the proprietor of a registered trade mark and which...