The IPKat does some field
research into flowers ...
Connoisseurs of long judgments will know that Interflora Inc and
Interflora British Unit v Marks and Spencer Plc and Flowers Direct Online
Limited [2013] EWHC 1291 (Ch) was decided last Monday, 21 May 2013, in the Chancery Division, High Court of Justice, England and Wales, by (who else?) Mr Justice Arnold. This is a 326 paragraph whopper, replete with colour illustrations that will look pretty grim when reproduced in the drab monochrome respectability of the European Trade Mark Reports (ETMR), which this blogger has the honour of editing.
For the benefit of new readers, and to refresh the memories of old ones, this action is all about the online woes of Interflora, which runs a famous flower delivery network in all countries in the world where flowers may be profitably sent by third parties. Interflora owned Community and United Kingdom registered trade
marks consisting of the word INTERFLORA. Marks & Spencer (‘M & S’) was
an equally well-known retailer of a large range of products, including flowers.
Both parties operated internet websites which took orders for the delivery of
flowers.
M & S paid Google a handsome sum for the use of, among others, the word ‘interflora’ as a keyword for
internet searches so that it could display advertisements for its own
flower delivery service. The M & S advertisements would appear on the search engine results page
when a consumer, searching the internet for Interflora's services, deployed the word ‘interflora’ as the
search term.
Your M & S -- but our INTERFLORA marks,
said Interflora. And they were right
Interflora, maintaining that the use by M & S of the
keyword ‘interflora’ as a means of displaying its own advertisements to
customers who were looking for Interflora infringed its trade
marks, sued for infringement of its Community and United
Kingdom trade marks. M & S denied
infringement and the trial judge (Mr Justice Arnold) referred a series of questions of
interpretation of the relevant legislation to the Court of Justice of the
European Union (CJEU) [decision here; full, uncensored list of questions here; subsequently pruned list of questions here]. Following the decision of the
CJEU here, the action
returned to Arnold J, who was tasked with the responsibility of deciding the case on the evidence. In particular, he had to rule on whether the use by M
& S of the Interflora trade marks as keywords affected or was liable to affect the
origin and investment functions of the trade marks. M & S denied infringement
and relied on the ruling of the CJEU that keyword advertising had no effect on the advertising function of a registered
trade mark.
Yes, said Arnold J, Interflora's trade marks had indeed been infringed.
* First, in case there should be any doubt, he summarised the position of the CJEU on double-identity infringement under Article 5(1)(a) of the Trade Mark Directive
and Article 9 of the Community Trade Mark Regulation. After reminding us of the relevant provisions of TRIPS with regard to double identity, he explained that six conditions had to be satisfied before M & S -- or any other defendant -- could be held liable for double-identity trade mark infringement: (i) there had to be use of a sign by a third party within the
relevant territory; (ii) the use had to be in the course of trade; (iii) it had
to be without the consent of the proprietor of the trade mark; (iv) it had to
be of a sign which was identical to the trade mark; (v) it had to be in
relation to goods or services which were identical to those for which the trade
mark was registered; (vi) it had to affect or be liable to affect one of the
functions of the trade mark or give rise to a likelihood of confusion on the
part of the public.
* It was settled law that the likelihood of confusion had to
be appreciated globally, taking account of all relevant factors. The likelihood
of confusion had to be judged through the eyes of the average consumer of the
goods or services in question, he or she being deemed to be reasonably well
informed and reasonably circumspect and observant, but who rarely had the
chance to make direct comparisons between marks and had to instead rely upon
a possibly imperfect mental recollection of them.
* It was settled law that it was for the national court to
determine whether a description of goods or services,a trade mark or a promotional
statement was liable to mislead by considering the matter from the perspective
of the average consumer who was reasonably well-informed and reasonably
observant and circumspect.
* Applying settled law, M & S had infringed. The preliminary ruling of the CJEU made it plain that three factors in particular were to be considered.
First, was the reasonably well-informed and reasonably
observant internet user deemed to be aware, on the basis of his or her general
knowledge of the market, that M & S's flower delivery service was not part
of the Interflora network but was in competition with it? The court was not satisfied that that was generally known at the relevant time, nor
was it satisfied that it was generally known now.
Secondly, would M & S's advertisements enable the
reasonably well informed and reasonably observant internet user to tell that M
& S's flower delivery service was not part of the Interflora network? On
the facts, they did not. There was nothing in any of M & S's advertisements
before the court that could be said to inform the reader that M & S's
flower delivery service was not part of the Interflora network.
Since M&S, which started out with clothing,
branched out into flowers, might Interflora not
retaliate by selling underwear?
Thirdly, what was the nature of the Interflora network? The CJEU had opined that the nature of the
Interflora network might make it particularly difficult for the reasonably
well-informed and reasonably observant internet user to determine, in the
absence of any indication in the advertisement, whether M & S's service was
part of the network or not. The court agreed with that. This was because one
feature of the Interflora network was that members traded under their own
names. In addition, lnterflora had commercial tie-ups with several large
retailers. That made it all the more plausible that there should be a
connection between M & S's flower delivery service and the Interflora
network.
* CJEU case law established
that the use of signs adversely affected the origin function of the trade marks
if such use did not enable reasonably well-informed and reasonably observant
internet users, or enable them only with difficulty, to ascertain whether M
& S's flower delivery service originated from Interflora, or from an
undertaking economically connected with Interflora, or whether originated from
a third party. On the facts and taking account of the factors mentioned by the
CJEU, the M & S advertisements which were
the subject of Interflora's claim, did not enable reasonably well-informed and
reasonably attentive internet users, or enabled them only with difficulty, to
ascertain whether the service referred to in the advertisements originated from
the proprietor of the trade marks, or an undertaking economically connected
with it, or originated from a third party. Indeed, a significant proportion of
the consumers who had searched for 'interflora' and similar signs on the
relevant date, and then clicked on to the M & S advertisements displayed in
response to those searches, were led to believe, incorrectly, that M & S's
flower delivery service was part of the Interflora network. It followed from
this that the use by M & S of Interflora’s signs had an adverse effect on
the origin function of Interflora’s trade marks.
This Kat is, as usual, impressed with the thoroughness with which Arnold J sifted and applied the various rulings and statements of courts both European and national in reaching his decision. While Interflora's action carried the day, it is now plain that, while M & S's use of 'interflora' as a keyword constituted a trade mark infringement, there will be still factual circumstances in which the use of another's trade mark does not infringe -- so long as the budding doctrine of initial interest confusion, to which the learned judge made reference at [306], is not brought into play.
Merpel would be surprised if this case stopped here. You can't write a judgment of getting on for 50,000 words for an audience of highly-skilled lawyers and expect them not to find something in it that was worthy of an appeal or two.