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In the case of Interflora Inc & Another –v- Marks and Spencer plc and Another, M&S paid Google AdWords for advertisements for its flower delivery service displayed on the search engine results page when internet users searched for “interflora” and similar terms. This is known as keyword advertising. Interflora brought proceedings against M&S for infringing its trade marks.

The High Court proceedings were lengthy and required a reference to the European Court of Justice as to whether the use of a trademarked term as a keyword amounted to trademark infringement.

The ECJ concluded that if the national court decided that the use of the Interflora trade mark as a keyword led internet users to believe the service offered by M&S was part of the Interflora network, then the trade mark’s function in indicating origin would be damaged.

The High Court, using the criteria set down by the ECJ, found that M&S had infringed Interflora’s trade marks by using them as keywords. This was because the adverts did not enable the reasonably well informed and reasonably observant internet users to work out (or only with difficulty) if the service referred to in the adverts originated from the trade mark owner; a business connected to it; or a third party.

The High Court found that M&S had infringed Interflora’s trade mark because a significant proportion of consumers who searched for “interflora” and were presented with M&S’ adverts were wrongly led to believe that the M&S flower delivery service was part of the Interflora network.

The Judge found that internet users today were more likely to appreciate the distinction between natural search results and paid advertisements on Google’s search engine results pages, as opposed to back in 2008 which was the relevant time period in this case. Nevertheless, even now, a significant proportion of individuals would not appreciate that distinction.

The Judge was not satisfied that the public would be aware that M&S were not part of the Interflora network and indeed were in competition with it; there was nothing in the M&S adverts to inform the reader that M&S were not part of the Interflora network; and given the nature of the Interflora network, it would make it particularly difficult for an individual to determine whether M&S were part of that network or not in the absence of any indication in the advertisement. It was noted that a feature of the Interflora network was that members traded under their own names and had commercial tie-ups with several large retailers, including Tesco. This made it even more plausible that a connection existed between the two.

The Court made it clear that whilst M&S had infringed on the facts of this case, keyword advertising is not inherently or inevitably objectionable from a trade mark perspective. Rather, ECJ case law has recognised that the use of keyword advertising encourages competition.

We at Blacks deal with all aspects of Intellectual Property law, to include claims for Passing Off and Trademark Infringement.

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