Registered Trade Mark Infringement Online
One of the most complex registered trade mark infringement claims heard at the High Court, London came to a conclusion after 4 years of battle between giants Interflora Inc. and Marks and Spencers (Interflora Inc. (2) Interflora British Unit v (1) Marks & Spencer Plc. (2) Flowers Direct Online Ltd [2010] EWHC 925). In 2009 the case was adjourned and referred by Arnold J, pending the preliminary rulings from the Court of Justice of the European Union regarding 10 questions of law. The preliminary ruling came back from Europe in 2011 and was set for trial in 2013 at the High Court in London. The trial took place and the decision was released in May 2013, see Interflora Inc & Anor v Marks and Spencer Plc & Anor [2013] EWHC 1291 (Ch).
The Court ruled that Marks & Spencers (M&S) had infringed Interflora’s registered trade mark by using words containing the term INTERFLORA to promote its own online flower delivery service.
The background to this is that M&S paid Google (the search engine) to display an advert for its online flower delivery service, so that when an internet user using Google's search engine typed in the word "INTERFLORA" and similar terms, the M&S service would come up as a sponsored link (this is known as keyword advertising). The sponsored link advert did not include the word "INTERFLORA". Interflora sued M&S for infringing its registered trade marks.
The trial judge, using the criteria laid down by the CJEU, held that M&S had infringed Interflora’s trade marks because M&S’s sponsored link advertisement did not enable a reasonably well-informed and reasonably attentive internet users to conclude (or if they could it was with difficulty) whether the services referred to on the M&S advertisement were in some way connected to or originating from a third party (Interflora) other than M&S. As a result, the indicator of origin function of INTERFLORA’s trade mark was affected – hence the ruling that M&S had infringed Interflora’s registered trade mark.
The court was also asked to consider whether the investment function of the INTERFLORA trade mark was affected, however the court held that there was no evidence to suggest this had occurred.
M&S made an application to appeal the decision which was recently granted. M&S’s appeal to the Court of Appeal is on two points (1) the significant proportion test; and (2) the reverse burden of proof. Watch this space!
Interflora’s trade mark was being used synonymously by many online flower delivery business, so the result in this claim is welcoming to brand owners and will send a clear message out to those that feel they can exploit the sponsored advertisement system to obtain any advantage over and above competitors, even if it means stepping on others around to get that advantage.
Advertisers should be careful what the reasonably well-informed and observant internet user believes is the undertaking connected, behind or affiliated with advertisement that comes up on Google’s AdWords. If for example, the average user cannot conclude who is behind the advertisement, then the trade mark’s indicator of origin function will be affected and thus infringed. The advertiser should appreciate that the average internet user may not appreciate the difference between paid for sponsored advertising and natural search engine listings and how search engines work.
BPE specialise in intellectual property litigation and have experience in the full range of contentious intellectual property matters. Our areas of work include advising and representing clients in relation to registered trade mark infringement, registered and unregistered design infringement, copyright infringement, passing off, seizure of counterfeit goods and domain name recovery.
For more information about our intellectual property service, please visit the intellectual property section of our website. Please feel free to call us on 01242 224433.
This article contains general information or opinion only and does not constitute legal advice. You should seek advice from BPE Solicitors LLP directly for any specific legal matter that you may have.
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