Interflora Inc. (a company incorporated under the laws of Michigan, United States) and Another v Marks and Spencer Plc
| Jurisdiction | England & Wales |
| Judge | Lord Justice Kitchin |
| Judgment Date | 05 November 2014 |
| Neutral Citation | [2014] EWCA Civ 1403 |
| Docket Number | Case No: A3/2013/1736/1737/1737(Y) |
| Court | Court of Appeal (Civil Division) |
| Date | 05 November 2014 |
[2014] EWCA Civ 1403
Lord Justice Patten
Lord Justice Kitchin
and
Sir Colin Rimer
Case No: A3/2013/1736/1737/1737(Y)
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY
COMMUNITY TRADE MARK COURT
The Hon Mr Justice Arnold
Royal Courts of Justice
Strand, London, WC2A 2LL
Mr Geoffrey Hobbs QC and Miss Emma Himsworth QC (instructed by Bristows LLP) for the Appellant
Mr Michael Silverleaf QC and Mr Simon Malynicz (instructed by Pinsent Mason LLP) for the Respondents
Hearing dates: 8–10 July 2014
This is the judgment of the court upon an appeal by the defendant ("M & S") against the judgments of Arnold J given on 21 May, 23 May and 12 June 2013 and his consequential orders made on 23 May and 12 June 2013 whereby he entered judgment for the claimants (collectively "Interflora") on their claim for infringement of their national and Community registered trade marks for the word "interflora". M & S also appeals against an earlier judgment of Arnold J given on 15 April 2013 and his consequential order made on that day dismissing the objections made by M & S to the admission of the evidence contained in various academic articles referred to in a Civil Evidence Act notice served by Interflora on 25 March 2013.
The activities of M & S which have given rise to these proceedings concern the display on the internet of M & S advertisements in response to the entry into the Google search engine by internet users of search terms consisting of or comprising the word "interflora" or minor variants of it.
Legal framework
Interflora alleged that M & S's activities amounted to an infringement of their trade marks under Article 5(1)(a) and 5(2) of First Council Directive 89/104 EEC of 21 December 1988 to approximate the laws of Member States relating to trade marks and Article 9(1)(a) and 9(1)(c) of Council Regulation 40/94 of 20 December 1993 on the Community trade mark. Directive 89/104 and Regulation 40/94 have since been repealed by, respectively, Directive 2008/99/EC of 22 October 2008 which came into force on 28 November 2008, and Regulation 207/2009 of 26 February 2009 which came into force on 13 April 2009. However, the alleged infringing activities began when Directive 89/104 ("the Directive") and Regulation 40/94 ("the Regulation") were in force and since the relevant provisions are in all material respects the same, Arnold J approached the allegations on the basis of the original provisions, and we shall do the same.
The tenth recital in the preamble to the Directive reads:
"Whereas the protection afforded by the registered trade mark, the function of which is in particular to guarantee the trade mark as an indication of origin, is absolute in the case of identity between the mark and the sign and goods or services; whereas the protection applies also in case of similarity between the mark and the sign and the goods or services; whereas it is indispensable to give an interpretation of the concept of similarity in relation to the likelihood of confusion; … the likelihood of confusion … constitutes the specific condition for such protection."
The seventh recital in the preamble to the Regulation is cast in almost identical terms.
Article 5 of the Directive provides:
"1. The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
(a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered;
(b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark.
2. Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.
3. The following, inter alia, may be prohibited under paragraphs 1 and 2:
(a) affixing the sign to the goods or to the packaging thereof;
(b) offering the goods, or putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder;
(c) importing or exporting the goods under the sign;
(d) using the sign on business papers and in advertising. …"
The wording of Article 9(1)(a) and (b) of the Regulation corresponds to that of Article 5(1) of the Directive. The wording of paragraph 2 of Article 9 corresponds to that of paragraph 3 of Article 5. Article 9(1)(c) of the Regulation says:
"A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
…
(c) any sign which is identical with or similar to the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark."
The background
The factual background is set out by the judge in great detail in his judgment of 21 May 2013 ( [2013] EWHC 1291 (Ch)) from [18] to [165]. The following is a summary of those matters necessary to understand the issues arising on this appeal.
Interflora operate the Interflora flower delivery network in the United Kingdom. The network comprises over 1,600 members who conduct business through over 1,800 florist shops. Customers may contact one of the network florists and place an order, either for delivery in the local area by that florist or for transmission to another network florist out of the area if the recipient is further afield. A substantial number of orders are also placed via the internet using Interflora's website and by telephone using Interflora's central telephone numbers. Such orders are then fulfilled by the network florist closest to the place where the flowers are to be delivered.
Interflora have always had a substantial reputation both in the United Kingdom and in other member states of the European Union for their flower delivery services. The Interflora network florists trade under their own brand names but also under the trade mark Interflora. They therefore have their own reputations under their own names and also benefit from (and contribute to) the reputation attaching to the Interflora brand.
In recent years, the second claimant ("IBU") has increasingly developed commercial relationships with third parties, including supermarkets. So, from 1995 to about 2000 IBU had a relationship with Sainsbury's that involved a measure of co-branding in selected Sainsbury's stores. In 2005 IBU entered into a relationship with the Co-Op that continues today and in which the Co-Op offers to its funeral clients the opportunity to order online floral tributes from Interflora, again with a measure of co-branding. In November 2009 IBU entered into a relationship with Tesco which again continues today and in which IBU and Tesco operate together a co-branded website.
M & S is one of the best known retailers in the United Kingdom. It trades under the brand names "Marks & Spencer" and "M & S" through over 700 stores and, since 1999, through the M & S website. For many years M & S sold goods under the brand name "St Michael" but in 2000 it dropped that name and since then has used "Marks & Spencer" as its main brand name. For very many years M & S has also sold goods under various subsidiary brand names such as "Autograph" and "Per Una" and, since 2009, it has sold goods of other undertakings under their own brand names, particularly in its food halls.
M & S has sold flowers in its stores since 1986. It began operating a telephone flower delivery service in 1992 and has provided an on-line flower delivery service since 2000. It is not and has never been part of the Interflora network and, as at May 2008, it did not have a strong reputation for on-line flower delivery, at least compared to Interflora.
M & S advertises its flowers on the internet and one of the ways it does this is by use of the Google AdWords service. In broad outline, this service works in the following way. A user of the Google search engine who has carried out a search is presented with a search engine results page or SERP which usually contains three elements. The first is the search box which contains the search term, a word or phrase typed in by the user. The second contains links to websites which appear to the Google search engine to correspond to the search term. These are known as the "natural" or "organic" results of the search and are usually displayed in order of...
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