Opinion of Advocate General Jääskinen
The Advocate General has delivered his eagerly awaited Opinion in Interflora v Marks & Spencer, a reference to the CJEU for a preliminary ruling from the High Court of Justice of England and Wales relating to keyword advertising on an internet search engine.
Both the claimant and the defendant offer a delivery service of flowers. The Interflora network is made up of independent florists with whom orders may be placed in person, by telephone or via Interflora’s websites www.interflora.com; www.interflora.co.uk. Online orders are fulfilled by the network member closest to the address to which the flowers are to be delivered.
Interflora alleged that Marks & Spencer infringed its INTERFLORA trade mark by having bought “interflora”, and variants of it with minor errors, and expressions containing the word “interflora” (such as “interflora flowers”, “interflora delivery”, “interflora.com”, “interflora co uk”), as keywords in the AdWords advertising service offered by Google. Consequently, when internet users entered the word “interflora” or one of those variants or expressions as a search term in the Google search engine a Marks & Spencer ad appeared under the heading “sponsored links”. The ad itself did not contain references to “Interflora”.
In his Opinion the Advocate General considered two types of trade mark infringement: under Article 5.1(a) of the Trade Marks Directive (equivalent to Article 9.1(a) of the Community Trade Mark Regulation and section 10(1) of the UK Trade Marks Act) and under Article 5.2 of the Trade Marks Directive (equivalent to Article 9.1(c) of the Community Trade Mark Regulation and section 10(3) of the UK Trade Marks Act).
Article 5.1(a) - identical sign/ identical goods or services
Article 5.1(a) of the Trade Marks Directive allows trade mark proprietors to prevent third parties from using signs identical with the registered trade mark in respect of goods or services identical with those for which the mark is registered. The Advocate General’s Opinion in relation to this head of infringement follows the CJEU’s decision in Google France (Joined Cases C-236/08 to C-238/08). His view was:
- The selection of keywords identical with third party trade marks does not contravene trade mark proprietor’s rights as such.
- Under Article 5.1(a) use as a keyword can be prohibited by the trade mark proprietor only if the ad does not enable an average internet user, or enables him only with difficulty, to ascertain whether the goods or services referred to originate from the trade mark owner or from an undertaking economically connected to it, or from a third party (following Google France).
- There is no infringement if the ad mentions the trade mark but effectively dissociates the advertiser from it, for example by means of legitimate comparative advertising.
- If the trade mark is not mentioned in the ad (which was the case here), the issue of infringement must be analysed taking into account the nature of goods and services protected by the mark and the meaning and reputation the mark has acquired through use in the minds of the relevant sector of the public.
In many cases when advertising links to sites offering goods or services of competitors of the trade mark owner are displayed beside or above the natural results of the search, the internet user may perceive the advertising links as offering commercial alternatives to the goods or services of the trade mark owner (following the CJEU in Google France). Display of commercial alternatives does not seem harmful to the origin function of the trade mark because the appearance of an ad in a sponsored link following the typing of a keyword identical with a trade mark does not create an association or a link between the trade mark and the goods or the service promoted by the ad. This applies to identical or similar goods or services, and the risk of error is even less likely in the case of different but related goods or services (e.g. air travel and car rental or hotels).
However, the Advocate General's view was that the present case was different because the mark " Interflora" has gained a secondary meaning denoting a very well-known commercial network of independent florists providing a special uniform service. In this particular case, therefore, the display of Marks & Spencer's ad as a consequence of typing "interflora" into a search engine created an association that Marks & Spencer was part of the Interflora network. Therefore, Marks &Spencer's use of "interflora" as a keyword infringed under Article 5.1(a) of the Trade Marks Directive.
Article 5(2) - marks with reputation and taking unfair advantage of or causing detriment to the distinctive character or reputation of the mark
Under Article 5(2) a trade mark proprietor may prevent use of a sign identical or similar to his registered trade mark in relation to any goods or services where the mark has reputation and use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark.
The Advocate General's opinion was that:
- Keyword advertising using well-known third party trade marks is not prohibited as such under Article 5(2).
- but use of a sign identical to the trade mark and in relation to identical goods or services as a keyword can be prevented under Article 5(2) when:
(i) the ad itself also mentions or displays the trade mark; and
(ii) the trade mark:
- is either used in the ad as a generic term covering a class or category of goods or services; or
advertiser attempts to benefit from the mark's power of attraction, its reputation or its prestige, and to exploit the marketing effort expended by the trade mark owner in order to create and maintain the image of the mark.
The Advocate General omitted the third type of scenario where the use of an identical sign causes detriment to the reputation of the mark (where goods/services offered by the advertiser have a characteristic or quality which is liable to have a negative impact on the image of the trade mark) ("tarnishment"). This would also amount to infringement but is not dealt with in detail in the Opinion because the case is not about tarnishment.
The Advocate General also made the following comments:
Detriment to the distinctive character of the mark
In Advocate General’s view there can be no dilution of a trade mark (i.e. weakening its meaning so that the mark comes to be seen as a generic term (e.g. hoover)) where the mark is not mentioned in the ad itself. As the ad itself did not contain "Interflora" (the only use of the trade mark was as a keyword ) there was no infringement by dilution in this case.
Taking unfair advantage of the distinctive character or repute of the mark
The Advocate General said that as the CJEU has in its Google France decision approved in principle keyword advertising using third party trade marks, the conditions of permissibility of that use and the question of free-riding on the reputation of the mark must primarily be evaluated on the basis of the visible outcome i.e. the ad in the sponsored link. If the ad mentioned or displayed the trade mark, the acceptability of the use depended on whether there was legitimate comparative advertising, or on the contrary, riding on the coat-tails of the trade mark proprietor. In this case, the mark was not mentioned in the advertisement and Marks & Spencer did not compare its goods or services with those of Interflora or expressly present them as alternative to Interflora. Nevertheless, in Advocate General’s view the choice of keywords in search engine advertising implied a marketing message that Marks & Spencer offered an alternative to Interflora. In Advocate General's opinion this did not amount to free-riding under Article 5(2).
Although the Advocate General said that it was obvious that Marks & Spencer was taking advantage of the repute of Interflora's trade mark (as it was inconceivable that Marks &Spencer's selection of keywords could be explained with any other motive), the question was whether such use was unfair and in Advocate General’s view this did not amount to infringement. In order to escape infringement the advertiser's use of the mark must have due cause. There was a need to promote undistorted competition and the possibilities of consumers to seek information about goods and services. In the case of identical goods or services, the purpose of presenting a commercial alternative to the goods or services protected by a trade mark counted as due cause in the context of modern marketing relying on keyword advertising on the internet.
Interflora complained that that keyword advertising by third parties increased the trade mark owner's own advertising costs because of the rise of the price per click charged by Google resulting from competition in relation to the relevant AdWords but, as had already been decided in Google France, this did not per se constitute unfairness or taking an advantage of the reputation of the mark and did not therefore amount to infringement.
As regards infringement under Article 5.1(a) the Advocate General has followed the CJEU’s ruling in Google France. Although he reached the conclusion that Marks & Spencer’s keyword use infringed Interflora’s trade mark under Article 5.1(a), this appears to be based on the particular facts of this case i.e. that because Interflora was so well known as a commercial network of independent florists, the display of Marks & Spencer's ad as a consequence of somebody typing "interflora" into a search engine created an association that Marks & Spencer was part of the Interflora network. The Opinion does not deviate from the existing law as laid down in Google France, and each case will continue to depend on its own facts.
The more interesting part of the Opinion is the Advocate General’s view that the mark must be mentioned in the advertisement in order for there to be infringement under Article 5.2. It will be interesting to see what, if any, parts of the Opinion will be followed by the CJEU. The key theme running through the Opinion is that it is important for consumers to be able to make enlightened choices between goods and services and therefore the display of alternatives, even where the advertiser uses its competitors’ trade marks as keywords, is a good thing. If the Opinion of the Advocate General is followed by the CJEU this will make it more difficult for trade mark proprietors to prevent use of their marks in keyword advertising where the mark is not displayed in the body of the advertisement.
As an aside, the referring court also asked the CJEU whether the fact that the search engine operator did not allow trade mark proprietors to stop others from registering their trade marks as keywords had a bearing on the issue of infringement. The Advocate General’s view was that this was immaterial in so far as the liability of the advertiser using the keywords was concerned.