Flower Power: INTERFLORA Vs. Marks & Spencers – once again the use of a keyword corresponding to a trade mark.

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Case C-323/09

The Court of Justice is in charge once again to decide on trademarks infringement in case of keyword advertising corresponding to the trade mark of a competitor of the advertiser.

INTERFLORA complained that Marks and Spencer plc (M&S) is involved in trade mark infringements by purchasing from paid internet referencing services (such as Google’s AdWords) keywords corresponding to the names of its trade mark ‘Interflora’,

INTERFLORA is a network made up of independent florists and operates a worldwide flower-delivery network, allowing customers to place orders in person, by telephone or online for flower deliveries worldwide. ‘Interflora’ is a national trade mark in the United Kingdom and also a Community trade mark and those marks have a substantial reputation in the European Union.

On the other hand, M&S is one of the main UK retailers and offers the sale and delivery, among the other services, of flowers by ordering via its website and shops.

This makes M&S and INTERFLORA direct competitors.

When M&S decide to use the renowed GoogleAdwords service, it selected the keyword ‘Interflora’ with other variants (e.g. ‘Interflora Flowers’, ‘Interflora.com’, ‘Interflora co uk’): customers who googled the word ‘Interflora’ would found M&S advertisement appearing under the heading ‘sponsored links’ which is displayed on the right-hand side of the screen, to the right of the natural results, of on the upper part of the screen, above the natural results.

The advertisement – sponsored link – did not itself include the trademark ‘Interflora’ or any similar sign.

The intention would be present the advertisement to the user by way of an alternative suggestion.

After INTERFLORA brought proceedings for trade mark infringement before the High Court of Justice (England & Wales), the Court of Justice was asked to rule on whether INTERFLORA is entitled to prevent M&S from displaying, on the basis of a keyword identical to Interflora trade marks, an advertisement for goods and services identical to those for which the Inteflora mark is registered and if this advertisement is liable to lead some members of the public to believe that the competitor is a member of the trade mark proprietor such as INTEFLORA.

The four questions are:

1.      Where a trader which is a competitor of the proprietor of a registered trade mark and which sells goods and provides services identical to those covered by the trade mark via its website:

–        selects a sign which is identical (…) with the trade mark as a keyword for a search engine operator’s sponsored link service,

–        nominates the sign as a keyword,

–        associates the sign with the URL of its website,

–        sets the cost per click that it will pay in relation to that keyword,

–        schedules the timing of the display of the sponsored link and

–        uses the sign in business correspondence relating to the invoicing and payment of fees or the management of its account with the search engine operator, but the sponsored link does not itself include the sign or any similar sign, do any or all of these acts constitute “use” of the sign by the competitor within the meaning of Article 5(1)(a) of [Directive 89/104] and Article 9(1)(a) of [Regulation No 40/94]?

2.      Is any such use “in relation to” goods and services identical to those for which the trade mark is registered within the meaning of Article 5(l)(a) of [Directive 89/104] and Article 9(1)(a) of [Regulation No 40/94]?

3.      Does any such use fall within the scope of either or both of:

(a)       Article 5(1)(a) of [Directive 89/104] and Article 9(1)(a) of [Regulation No 40/94]; and

(b)       Article 5(2) of [Directive 89/104] and Article 9(l)(c) of [Regulation No 40/94]?

4.      Does it make any difference to the answer to question 3 above if:

(a)      the presentation of the competitor’s sponsored link in response to a search by a user by means of the sign in question is liable to lead some members of the public to believe that the competitor is a member of the trade mark proprietor’s commercial network contrary to the fact; or

(b)      the search engine operator does not permit trade mark proprietors in the relevant Member State … to block the selection of signs identical to their trade marks as keywords by other parties?

The Court of Justice cited its judgment (Google France and Google; Portakabin vs Primakabin; L’Oréal vs. Bellure) and ruled, facing the novelty of this case concerning the protection of trade marks with a reputation, as follows:

[...] The proprietor of a trade mark is entitled to prevent a competitor from advertising – on the basis of a keyword which is identical with the trade mark and which has been selected in an internet referencing service by the competitor without the proprietor’s consent – goods or services identical with those for which that mark is registered, where that use is liable to have an adverse effect on one of the functions of the trade mark. Such use:

–      adversely affects the trade mark’s function of indicating origin where the advertising displayed on the basis of that keyword does not enable reasonably well-informed and reasonably observant internet users, or enables them only with difficulty, to ascertain whether the goods or services concerned by the advertisement originate from the proprietor of the trade mark or an undertaking economically linked to that proprietor or, on the contrary, originate from a third party;

–      does not adversely affect, in the context of an internet referencing service having the characteristics of the service at issue in the main proceedings, the trade mark’s advertising function; and

–      adversely affects the trade mark’s investment function if it substantially interferes with the proprietor’s use of its trade mark to acquire or preserve a reputation capable of attracting consumers and retaining their loyalty.

2.      [...] The proprietor of a trade mark with a reputation is entitled to prevent a competitor from advertising on the basis of a keyword corresponding to that trade mark, which the competitor has, without the proprietor’s consent, selected in an internet referencing service, where the competitor thereby takes unfair advantage of the distinctive character or repute of the trade mark (free-riding) or where the advertising is detrimental to that distinctive character (dilution) or to that repute (tarnishment).

Advertising on the basis of such a keyword is detrimental to the distinctive character of a trade mark with a reputation (dilution) if, for example, it contributes to turning that trade mark into a generic term.

By contrast, the proprietor of a trade mark with a reputation is not entitled to prevent, inter alia, advertisements displayed by competitors on the basis of keywords corresponding to that trade mark, which put forward – without offering a mere imitation of the goods or services of the proprietor of that trade mark, without causing dilution or tarnishment and without, moreover, adversely affecting the functions of the trade mark with a reputation – an alternative to the goods or services of the proprietor of that mark”.

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