ECJ: the Court clarifies the scope of trade mark protection in the European Union

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In this case the national court will have to determine, inter alia, whether Marks & Spencer – by its use, within Google’s referencing service, of keywords corresponding to the trade mark of its competitor Interflora – undermined any of the “functions” of that trade mark and whether it was “free-riding”

The American company Interflora Inc. operates a worldwide flower-delivery network. Interflora British Unit is a licensee of Interflora Inc. The Inteflora network is made up of florists with whom customers may place orders in person, by telephone or via the internet, those orders then being fulfilled by the network member closest to the place where the flowers are to be delivered.

INTERFLORA is a national trade mark in the United Kingdom and also a Community trade mark. Those marks have a substantial reputation both in the United Kingdom and in other Member States of the European Union.
Marks and Spencer, “M & S”, an English company, is one of the main retailers in the United Kingdom. One of its services is the sale and delivery of flowers, a commercial activity that is in competition with that of Interflora.
M & S, using Google’s “AdWords” referencing service, selected as keywords the word ‘Interflora’ and variants on that word (‘Interflora Flowers’, ‘Interflora Delivery’, ‘Interflora.com’, ‘Interflora co uk’ etc). Consequently, when internet users entered the word ‘Interflora’ or one of those variants as a search term in the Google search engine, an M & S advertisement appeared.

The High Court of Justice (England & Wales), Chancery Division, before which Interflora brought proceedings for trade mark infringement against M & S, has referred questions to the Court of Justice on a number of issues concerning the use by a competitor, within an internet referencing service, of keywords identical to a trade mark, where consent has not been given by the trade mark proprietor1.

The Court observes, first of all, that in the case of use by a third party of a sign identical to the trade mark in relation to goods or services identical to those for which the trade mark is registered, the proprietor of the trade mark is entitled to prevent that use only if it is liable to have an adverse effect on one of the “functions” of the mark. A trade mark’s essential function is to guarantee to consumers the origin of the goods or services covered by it (function of indicating origin), the other functions including the “advertising” and “investment” functions. The Court points out in that regard that the trade mark’s function of indicating origin is not the only function of the mark that is worthy of protection against injury by third parties: a trade mark is often – in addition to an indication of the origin of the goods or services – an instrument of commercial strategy used, inter alia, for advertising purposes or to acquire a reputation in order to develop consumer loyalty. Here to read more.

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