UK High Court finds for Interflora in the long running AdWords dispute with Mark & Spencer

On 21 May 2013, the UK High Court of Justice handed down a long awaited decision in the long running dispute between Interflora and Mark & Spencer (M&S).

In this case, Interflora had commenced an action against M&S after M&S purchased from the Google AdWords service several keywords including Interflora’s registered trademarks with a view to triggering advertisements for its own flower delivery service.

The case was referred to the CJEU (see Case C-323-09 Interflora v. Marks & Spencer; Newsletter 6/2011 p.9) for which the key issue was whether M&S’s use of Interflora’s trademarks adversely affected “the origin function” of these marks i.e. whether such use “enabled reasonably well-informed and reasonably observant internet users to ascertain whether M&S’s flower delivery service originated from Interflora or an undertaking economically connected with Interflora or originated from a third party”.

The judgment, delivered by Judge Richard Arnold, concluded that by using Interflora’s trademarks as AdWords to trigger advertisements to their own benefit, without making sure that this would not lead a significant proportion of the consumers who searched for Interflora to believe, incorrectly, that M&S’s flower delivery service was part of the Interflora network, M&S had infringed Interflora’s registered trademarks.

To reach this conclusion, Judge Arnold notably mainly considered the following factors:

Whether the relevant Internet user (i.e. reasonably well-informed and observant) should be deemed to be aware, on the basis of her general knowledge of the market, that M&S’s flower delivery service was not part of – but rather in competition with – the Interflora network.  On the facts, the judge found that this circumstance was not generally known.

Whether M&S’s advertisements enabled the relevant user to tell that M&S’s flower delivery service was not part of the Interflora network. On the facts, the judge found that M&S had not adequately informed the user that M&S’s flower delivery service was not part of the Interflora network

Whether, in view of the nature of the Interflora network (i.e. a network of a large number of retailers of varying sizes) the relevant Internet user could determine that these two services were in competition

In view of these findings, the Court concluded that M&S was liable for trademark infringement since it had failed to make clear in its advertisement that its flower delivery service did not originate from Interflora or an economically-connected undertaking. [Béatrice Martinet Farano]