The Advocate General of the European Court of Justice has issued it's opinion in Interflora Inc and Interflora British Unit v Marks and Spencer's plc and Flowers Direct online (the ''Interflora case''). This case represents the latest preliminary reference in the chain of cases relating to keyword advertising on an intranet search engine which we previously discussed in the January and June editions of our IP E-bulletin back in 2009.
Interflora alleged that Marks and Spencer (M&S) and Flowers Direct Online breached trade mark law by sponsoring the word "Interflora" as well as variants of the word with minor errors including "Intaflora", and "Inter-flora" as a search engine keyword through Google's paid internet referencing service, Google AdWords. This meant that when users searched for the term Interflora or a similar variant or even an expression containing the term, advertisements appeared for both M&S and Flowers Direct as 'sponsored links'. Interflora alleged that the defendants' use of the Interflora trade mark (the word 'Interflora') is detrimental to their mark as it will cause a blurring or dilution of their mark which will lessen the capability of the Interflora mark to distinguish the goods and services of Interflora, from those of its competitors. In addition, Interflora alleged that by using Interflora's trade mark, the defendants were benefiting from the reputation of Interflora, and thus gaining an unfair advantage.
In May last year the ECJ delivered the first of its rulings on the question of whether the use of a registered trade mark in an internet Adword or sponsored link constitutes an infringement of that registered trade mark by any of the parties involved (the Google AdWords case). We provided a discussion of the Google AdWords case in our April edition of our IP ebulletin in 2010. In the Google AdWords case the ECJ said that Google was not breaching EU Law by making trade marked keywords available to advertisers. There were a number of points of distinction, however, between the two cases. Most importantly, the Interflora action was not brought against Google but Interflora's competitors, Marks and Spencer and Flowers Direct Online.
The Advocate General has confirmed that a sign identical with a trade mark is used ''in relation to goods or services'' when it has been selected as a keyword in an internet referencing service (such as the Google AdWords programme) without the consent of the trade mark proprietor when the advert does not allow the 'average' internet user or enables the user only with difficulty to ascertain whether the goods or services referred to in the advert originate from the proprietor of the trade mark or one of their related companies or from a third party. Furthermore the Advocate General has set out that where a sign has been used in this way the trade mark proprietor has the right to stop the use of its trade mark in Google Adwords.
The Advocate General was also asked to consider the circumstances where an advertisers use of a sign identical to a competitor's trade mark blurs or dilutes the distinctive character of that mark or takes unfair advantage of the distinctive character or reputation of that trade mark. The Advocate General responded that in his opinion the use of a sign as a keyword in an internet referencing service in relation to goods or services identical to those covered by an identical trade mark with a reputation can be forbidden by the trade mark proprietor where:
- the advertisement shown as a result of the internet users search using a keyword identical to the trade mark with a reputation mentions or displays that trade mark; and
- the trade mark is either (i) used as a generic term covering a particular class or type of goods or services and not as a way to distinguish between goods or services of different origins; or (ii) the advertiser attempts to benefit from the trade mark's reputation and ability to attract customers and thereby exploit the marketing of the trade mark proprietor.
As an aside, the Advocate General commented that whether the internet search engine operator does or does not permit trade mark proprietors in the relevant geographical area to block the selection of signs identical to their trade marks as a key word by other parties, is irrelevant as far as the liability of the advertiser using the keywords is concerned.
Finally, it would seem that spring has indeed finally arrived for Interflora with the Advocate General's opinion being positive for them. Indeed Interflora have confirmed that they are 'very encouraged' by the Advocate General's findings. However, Interflora would be wise to remain cautious as, although the opinion of the Advocate General is generally followed by the ECJ, it is not binding.