Interflora Inc. and Another v Marks and Spencer Plc and Another
| Jurisdiction | England & Wales |
| Judge | Mr. Justice Birss |
| Judgment Date | 02 December 2014 |
| Neutral Citation | [2014] EWHC 4168 (Ch) |
| Date | 02 December 2014 |
| Court | Chancery Division |
| Docket Number | Case No: HC08C03440 |
[2014] EWHC 4168 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
COMMUNITY TRADE MARK COURT
Royal Courts of Justice
The Rolls Building,
7 Rolls Buildings,
London, EC4A 1NL
Mr. Justice Birss
Case No: HC08C03440
Mr. Michael Silverleaf Q.C. and Mr. Simon Malynicz (instructed by Pinsent Masons) for the Claimants
Miss Emma Himsworth Q.C. (instructed by Bristows LLP) for the Defendants
This is an application for an interim injunction. The claimant is Interflora. They are a well-known flower delivery network in the United Kingdom. I think about a third of florists in the UK are members of the network. They are a substantial and successful business, and the name Interflora is well known.
The defendant is Marks and Spencer. They are a very well known retailer. They are particularly well known for clothing and food. They are a household name in the United Kingdom. They also sell flowers.
Both operate online. Interflora has a website, and so does Marks and Spencer. Both take orders online for flowers and flower deliveries. I believe they are the two top online flower delivery businesses in the UK, at least by volume.
This dispute relates to internet searching. It has a long history. It really began in 2008, when Google changed its policy and allowed third parties to bid for adwords which were trade marks but did not belong to the bidder. So, from that time, Marks and Spencer began bidding for the adword "interflora". Accordingly, a person typing the word "interflora" into the Google search engine, whom, one might suppose, was looking for Interflora, perhaps to buy flowers, could be presented with a so-called sponsored link that is an advertisement for Marks and Spencer. They would click through the advertisement and get to the Marks and Spencer site and, one might imagine, buy flowers. An important point relied on by both sides is that the Marks and Spencer advertisement does not contain any reference to Interflora.
Interflora contends that this amounts to trade mark infringement of its trade marks for the word INTERFLORA registered for flowers.
After proceedings started, the case was stayed for some years pending references to the Court of Justice to the European Union. At the hearing to decide on the references and to consider a stay, Arnold J held that no interim injunction pending the stay should be granted. One reason at the time was that the claimants had delayed too long before seeking interim relief.
There were two relevant decisions from the Court of Justice: so-called Google France and the Interflora decision itself. The Google France decision held, essentially, that adwords are at least capable of being infringements of trade marks. The Interflora decision considered the issues arising on the facts of this case.
It is difficult to summarise the conclusions of law that these judgments have reached. Recognising that the following is an incomplete summary, I will refer to paragraphs 96 to 100 of the judgment of the Court of Appeal in this case, which includes citations from the CJEU:
'96. It was then for the national court to make its assessment, and to do so from the perspective of the reasonably well-informed and reasonably observant internet user:
"53. Having regard to that situation and to the other matters that it may consider relevant, the referring court will, in the absence of any general knowledge such as that referred to at [51] of this judgment, have to determine whether or not the use of words such as "Marks and Spencer Flowers" in an advertisement such as the one set out at [19] of this judgment is sufficient to enable a reasonably well-informed and reasonably observant internet user who has entered search terms including the word "interflora" to tell that the flower-delivery service offered does not originate from Interflora."
97. Guidance on the effect on advertising function is set forth in the decision from [54] to [59]. The Court restated that the use of a sign identical to another person's trade mark in the Google referencing service did not adversely affect the advertising function of that mark, even though it might have repercussions on the use of the mark in advertising. In this connection the Court recognised that the use of such a sign as a keyword meant that the proprietor of the trade mark might have to pay a higher price per click than the competitor if it wished to ensure that its advertisement appeared before that of the competitor. But this did not necessarily mean that the trade mark's advertising function was adversely affected:
"57. However, the mere fact that the use, by a third party, of a sign identical with a trade mark in relation to goods or services identical with those for which that mark is registered obliges the proprietor of that mark to intensify its advertising in order to maintain or enhance its profile with consumers is not a sufficient basis, in every case, for concluding that the trade mark's advertising function is adversely affected. In that regard, although the trade mark is an essential element in the system of undistorted competition which European law seeks to establish (see, in particular, Case C-59/08 Copad SA v Christian Dior Couture SA [2009] E.C.R. I-3421; [2009] F.S.R. 22 at [22]), its purpose is not, however, to protect its proprietor against practices inherent in competition.
58. Internet advertising on the basis of keywords corresponding to trade marks constitutes such a practice in that its aim, as a general rule, is merely to offer internet users alternatives to the goods or services of the proprietors of those trade marks (see, to that effect, Google France [2010] R.P.C. 19 at [69]).
59. The selection of a sign identical with another person's trade mark, in a referencing service with the characteristics of "AdWords", does not, moreover, have the effect of denying the proprietor of that trade mark the opportunity of using its mark effectively to inform and win over consumers (see, in that regard, Google France [2010] R.P.C. 19 at [96] and [97])."
98. Again this is a significant passage for it shows an appreciation by the Court that internet advertising using keywords which are identical to trade marks is not an inherently objectionable practice. On the contrary, its aim is, in general, to offer to internet users alternatives to the goods or services of trade mark proprietors and it is not the purpose of trade marks to protect their proprietors from fair competition.
99. Similar guidance was given by the Court in relation to the investment function. First, it explained the nature of this function:
"62. When the use by a third party, such as a competitor of the trade mark proprietor, of a sign identical with the trade mark in relation to goods or services identical with those for which the mark is registered 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, the third party's use must be regarded as adversely affecting the trade mark's investment function. The proprietor is, as a consequence, entitled to prevent such use under Article 5(1)(a) of Directive 89/104 or, in the case of a Community trade mark, under Article 9(1)(a) of Regulation 40/94.
63. In a situation in which the trade mark already enjoys such a reputation, the investment function is adversely affected where use by a third party of a sign identical with that mark in relation to identical goods or services affects that reputation and thereby jeopardises its maintenance. As the Court has already held, the proprietor of a trade mark must be able, by virtue of the exclusive right conferred upon it by the mark, to prevent such use (Case C-324/09 L'Oréal SA v eBay International AG [2011] R.P.C. 27 at [83])."
100. But again, the investment function does not provide a means to protect trade mark proprietors against the effects of fair competition, even if such competition means that these proprietors have to adapt their efforts to acquire or preserve a reputation capable of attracting and retaining customers:
"64. However, it cannot be accepted that the proprietor of a trade mark may—in conditions of fair competition that respect the trade mark's function as an indication of origin—prevent a competitor from using a sign identical with that trade mark in relation to goods or services identical with those for which the mark is registered, if the only consequence of that use is to oblige the proprietor of that trade mark to adapt its efforts to acquire or preserve a reputation capable of attracting consumers and retaining their loyalty. Likewise, the fact that that use may prompt some consumers to switch from goods or services bearing that trade mark cannot be successfully relied on by the proprietor of the mark."'
The Court of Justice in Interflora makes the point that a key aspect of this case was the fact that Interflora is a network. The point Interflora makes is this: because Interflora is and is known by the public to include a network of florists, there was nothing inherently improbable about the idea that Marks and Spencer might be part of the Interflora network. So, when a user searches for "interflora" and sees the Marks and Spencer advert, they or some of them will assume that Marks and Spencer is part of the network, and the fact that there is no reference to Interflora does not tip them off that Marks and Spencer is...
To continue reading
Request your trial
-
Awbury Technical Solutions LLC v Karson Management (Bermuda) Ltd
...communications which were much more clearly publications. 40 Boehringer Ingelheim v Vetplus concerned comparative advertising. Interflora v Marks & Spencer Plc [2014] EWHC 4168 (Ch) concerned internet advertising by the use of adverts. As Birss J put it at paragraph 22: “What the defendant......
-
Heythrop Zoological Gardens Ltd and another v Captive Animals Protection Society
...interim relief pending the trial or any relevant appeal." 51 The claimant cited a judgment of mine in Interflora v. Marks and Spencer [2014] EWHC 4168 (Ch). That case involved Art.10, but it was a trademark case. It did not involve privacy or Art.8. I adhere to what I said in that judgment ......
-
Autostore Technology as (a company incorporated under the laws of Norway) v Ocado Group Plc
...40. Boehringer Ingelheim Ltd v Vetplus Ltd [2007] Bus LR 1456 concerned comparative advertising. Interflora Ltd v Marks and Spencer Plc [2015] FSR 13 concerned internet advertising by the use of adverts. As Birss J put it at paragraph 22: ‘What the defendant wishes to do is publish an adver......