Advertising keywords and trade mark infringement

This is the subject of a current trade mark infringement dispute – Interflora v Marks & Spencer – in which Interflora brought proceedings against Marks & Spencer (“M&S”) in relation to M&S’s use of the word “Interflora” as an advertising keyword. 

Interflora argued that the advertising keyword led Google users who typed the word “Interflora” (or variants of that word) into the search function, to advertisements for M&S flower delivery services and that this therefore constituted trade mark infringement.

In deciding whether an infringement had taken place, the High Court sought guidance from the European Court of Justice (“ECJ”), for essentially the following issues:

• Is a trade mark proprietor entitled to prevent a competitor from displaying advertisements (via keywords) for goods or services identical to those for which the mark is registered?
• Is it relevant that the advertisement concerned is liable to lead some members of the public to incorrectly believe that the advertiser is a member of the trade mark proprietor’s commercial network?
• Is it relevant that the internet referencing service (i.e. Google in this case) does not permit trade mark proprietors to prevent signs identical to their trade mark being selected as keywords?

In answering the above issues, the ECJ took regard to one of its previous judgments in holding that selecting a trade mark as a keyword in Google constitutes a use of that trade mark by the advertiser in respect of the advertiser’s goods or services.

However, the ECJ said that the trade mark proprietor is entitled to prevent a competitor from advertising 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 as for example:

• the trade mark’s function of indicating origin; or
• the trade mark’s investment function e.g. it interferes with the trade mark proprietor’s use of its mark to acquire or preserve a reputation capable of attracting consumers and retaining their loyalty.

The ECJ also stated that a 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 selected in an internet referencing service (e.g. Google)  without the proprietor’s consent, if the competitor takes unfair advantage of the distinctive character or repute of the trade mark (i.e. free-riding), or where the advertising is detrimental to that distinctive character (i.e. dilution), or to that repute (i.e. tarnishment).

However, the proprietor of a trade mark with a reputation cannot prevent such advertisements if the advert displayed on the basis of a keyword which corresponds to a trade mark, merely provides an alternative to the goods or services of the proprietor of that mark.

In order to assess the full effects of the ECJ’s guidance, we need to wait until the High Court has applied the guidance to the case at hand.

Contact: Simon Miles, Partner – Head of Intellectual Property

If you aren’t receiving our legal updates directly to your mailbox, please sign up now