Blooming trade marks

The High Court decision in Interflora v Marks & Spencer

At the end of May, Mr Justice Arnold in the High Court gave his decision in the long running dispute between these two household names concerning M&S's purchase of a number of Google "adwords" including "Interflora" and "Interflora flowers" - essentially meaning that M&S's adverts were displayed above or alongside the "natural results" of a Google search including those terms.

The dispute began in 2008 when Interflora challenged M&S's use of its trade marks as "adwords" and a reference was made to the European Court of Justice. That Court, however, ruled that companies are entitled to use the trade marks of others provided that such use did not undermine the essential function of the mark "as a trade mark" by causing confusion amongst internet users as to the existence of some connection of origin between the goods being sold using the adwords, and the goods of the trade mark owner. However the ECJ did not rule on whether infringement had actually taken place in this instance.

The case continued in the High Court, and in his recent judgment, Mr Justice Arnold said;

"As at 6 May 2008, the M&S advertisements which are the subject of Interflora's claim did not enable reasonably well-informed and reasonably attentive internet users, or enabled them only with difficulty, to ascertain whether the service referred to in the advertisements originated from the proprietor of the trade marks, or an undertaking economically connected with it, or originated from a third party,"

He focussed particularly on the fact that a significant proportion of consumers who searched on Google for "Interflora" and then were led to click on the M&S adverts (leading of course to the M&S website) were led to believe that M&S's flower delivery service was now part of the Interflora network, and that therefore M&S had infringed Interflora's trade marks.

It is probably significant in this particular case that the Interflora brand is slightly unusual in that its normal use is alongside the names and brands of other, independent, floristry businesses who make up the Interflora "network" and are licensed by Interflora to use the marks accordingly.

Against the background of that business model, therefore, the Court may have been more willing to accept that "an average consumer who is reasonably well-informed and reasonably observant and circumspect" could be confused into assuming an economic connection of some sort between Interflora, the owner of the brand, and M&S apparently using it in connection with their own delivery florist business.

Nonetheless, a business considering the purchase of its competitor's trade mark(s) as Google adwords or to use such marks in other ways aimed at Search Engine Optimisation would be sensible to take advice on the implications of this case before proceeding.

This article is for general guidance only. It provides useful information in a concise form. Action should not be taken without obtaining specific legal advice.