Trademark decision nothing to be sniffed at
Flower delivery service Interflora has won its long-running trademark infringement case with Marks & Spencer (M&S) over Google Adwords.
M&S paid Google for “pay-per-click advertising” whereby an advert for their flower delivery business appeared when an internet user searched for Interflora, and Google received a payment every time the user clicked on the advert to go through to M&S’s website.
A Google policy change in 2008 allowed third parties to bid on other parties’ trademarks. Consequently, Interflora had to pay nearly £1.6m to bid for its own trademark—as opposed to about £100,000 if the policy had not changed.
Interflora complained that the Adwords led consumers to think the two brands were connected thereby adversely affecting its share of the £2bn UK flowers market.
Following guidance from the European Court of Justice, Mr Justice Arnold held that there had been an adverse effect on the origin function of the trademark and an infringement under Art 5(1) of the trademarks Directive, in Interflora v Marks & Spencer [2013] EWHC 1291 (Ch).
He said there was a reversed burden of proof on the advertiser to show that the sign was clear and there was no real risk of confusion on the part of the average consumer. He held that the advert did not enable reasonably well-informed and observant users to determine that M&S’s flower service was not part of the Interflora network.
Arnold J also observed that the fact Interflora has many commercial tie-ups with retailers would make it difficult for a user to know M&S was not part of this network.
Paul Cox, a partner in the Intellectual Property Group says: “The court has re-confirmed the general position that advertisers are able to bid on trademarks belonging to third parties in order to trigger their own sponsored links through the Google search engine.
“However, in some limited cases like this one—where Interflora operates a network and licenses third parties to use its mark—it may be that the advertiser’s use of the trade mark amounts to trade mark infringement because the public are confused into thinking that the advertisement is from the trade mark proprietor or is somehow connected to or approved by the trade mark proprietor. The Interflora case is exceptional as normally the public will know that two parties offering similar goods or services are competitors and unrelated (like with Pepsi and Coca Cola).”
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