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Archive for the ‘Trademark Law’ Category

Photo Courtesy of Interflora

The Advocate General Niilo Jaeaeskinen has conveyed his non-binding opinion on the on-going dispute between Interflora and Marks & Spencer at the European Court of Justice in Luxembourg.

Interflora, which was established in 1953 and has a network of nearly two thousand UK florists, is battling against Marks & Spencer’s use of the keyword search terms ‘Interflora’, ‘Intaflora’ and ‘Interflora Delivery’ to advertise its own products on Google.

Interflora put forward the following plea to the ECJ: “Where a trade mark owner such as Interflora has invested considerably in its trademark, and consumers rely on that trademark to guide their purchasing behaviour, should a competitor such as Marks & Spencer be entitled to trade off and make money from using Interflora’s trademarks at the expense of Interflora?”

The case could lead to retailers being forbidden from using any trademarked terms that they do not own to advertise online. Advertisements could, it has been suggested, confuse online users, and where this is the case, says Jaeaeskinen, there is just cause for legal proceedings.

In his statement, the Advocate General said: “An error concerning the origin of goods or services arises when the competitor’s sponsored link is liable to lead some members of the public to believe that the competitor is a member of the trademark proprietor’s commercial network when it is not. As a result of this the trademark proprietor has the right to prohibit the use of the keyword in advertising by the competitor in question.”

The ECJ verdict is expected in around six months’ time and, if the ruling goes Interflora’s way, European brand owners could be able to gain control over the use of their trademarks in search marketing, whilst also serving to further protect consumers against misleading online advertising.

Many hope that the outcome of the Interflora/M&S dispute will advance the ECJ’s March 2010 ruling in a case brought against search giant Google by luxury goods group LVMH Moet Hennessy Louis Vuitton S.A.

LVMH protested that Google’s ad policy violated trademark rules and purported that it served only to sponsor the online counterfeit goods market. Nevertheless, the ECJ ruled that where Google was simply selling its AdWords, the company wasn’t liable for trademark infringement, thus allowing companies to piggyback on the reputation of well-established, trusted names that have become synonymous with certain products or services.

This landmark case between Interflora and M&S should clarify legislation surrounding Internet advertising and serve to better protect brand owners’ right to maintain control of the trademarks they have worked so tirelessly to forge and promote.

This is a case first reported last December and most people probably thought it would be settled out of court as is normally the case in these situations. However according to a post on the Interflora blog the issue has been referred to the European court.

According to the lawsuit M&S is bidding on the “interflora” keyword using Google AdWords (you can see this in action here and on the screenshot below).

According to the lawsuit, “when a user enters the search term INTERFLORA or similar into the Google search engine, it is the intention of that user to look for [Interflora or its associates].”

The case argues that sections 10(1) and 10(3) of the Trade Marks Act 1994 are being breached by M&S and Flowers Direct.

Section 10(1) is breached by making use of a sign which is identical to another’s trade mark, in the course of trade, in relation to goods or services identical to those for which the trade mark is registered.

Section 10(3) is breached by making use of a sign which is identical or similar to another’s trade mark, and where the use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the reputes of the trade mark.

Interflora says the defendants’ use is detrimental to Interflora’s trade mark “because there will be a blurring or dilution that will lessen the capability of the Trade Marks to distinguish [Interflora] and its goods and or services from those of others.”

The judge in the case Mr Justice Arnold has apparently commented that Google’s decision to operate a different policy in the UK and Ireland to that in the rest of Europe is “fairly remarkable given that the relevant law is, or should be, essentially the same throughout Europe.”