Their ads used to encourage us to “Say it with flowers”, but these days businesses like Interflora often prefer to use the internet to talk to us and like many others, the company now trades online. However, it wasn’t a bouquet which Interflora put in the post recently to one of its online rivals, but rather a High Court claim.
The exponential growth in businesses’ online advertising expenditure over the past few years (which overtook traditional newspaper advertising spend in 2006) has spawned new forms of net-based marketing, such as ‘sponsored links’. When a particular ‘keyword’, is entered into a web search engine, advertisements for businesses which have paid the search engine provider to be associated with that term appear in a separate ‘sponsored links’ section of the search results page. Operators of search engines, such as Google, allow businesses to buy or ‘sponsor’ these keywords, to allow them to be used in the links advertising the sponsors’ websites and products – even if the keyword in question happens to be a registered trade mark of one of the sponsor’s business competitors.
Interflora has registered the word INTERFLORA as a trade mark in the . The High Court case arose when Interflora discovered that typing their mark, or a similarly spelled word, into Google returned not only the usual search results but also a sponsored link. And this was not just any sponsored link – this was an M&S sponsored link...
Interflora’s claim against Marks & Spencer concerns M&S’s sponsoring of the words ‘Interflora’, ‘Inter-flora’ and ‘Intaflora’ as keywords. Interflora alleges that the defendant’s use of its registered mark (and variants of it) in this way constitutes an infringement of Interflora’s rights in the mark in terms of sections 10(1) and 10(3) of the Trade Marks Act 1994 (the “TMA”).
This is a still developing area of trade mark law, but a case came before the High Court last year which dealt with similar, though not identical, facts. In that case, Wilson –v- Yahoo and Others, the court found that the search engine company’s use of the word ‘spicy’ as a keyword which triggered sponsored links to other traders’ websites (including Sainsbury’s) did not infringe the claimant’s registered mark MR SPICY. The judge ruled that this was not a ‘trade mark’ use of the word and hence not a breach of the trade mark owner’s rights under the TMA.
However, the applicability of the MR SPICY judgment as a precedent is limited. The case was decided very much on its facts - for example, the keyword in question was the normal English word, ‘spicy’, not the MR SPICY mark itself. This distinction would not however apply in relation to non-generic words like ‘Interflora’.
Aside from the importance of sponsored links as a new source of revenue for the search engine companies and advertisers who use them, the Interflora case will also be followed closely by those who advise businesses for the following reasons. First, despite the ruling in MR SPICY, there is still an active debate in the business community over whether the sale of registered trade marks as keywords for use by competitors of the owners of the registered marks to promote their own sites and services via sponsored linking in this way is lawful.
Second, the Interflora case involves two major companies, each with the resources to pursue a judgment to the highest courts in the land (e.g. the Court of Appeal or even the House of Lords) if they think it is justified. This means that the final judgment, when it is delivered, will be an authoritative and more generally applicable statement of the relevant law in and , which will hopefully dispel this legal uncertainty.
And third, it offers a valuable opportunity for a superior court to reconcile an inconsistency which appears to have opened up in the law on this point between states within the EU – specifically between the courts of the and , and those in (where infringement has been found in several cases involving keywords). Trade mark law was intended to be harmonised throughout the EU by the EU Trade Mark Directive (89/104/EEC), which was implemented in the by the TMA. The Internet is also by its very nature no respecter of national frontiers, so all the more reason why an entirely Web-based marketing technique should be treated consistently by the courts across different jurisdictions, especially within a single market like the EU.
However, the wheels of justice grind slowly so it is likely to be many months before we find out which side, Interflora or M&S, is garlanded by the court. We will be monitoring the case with interest
For a no-obligation chat about how we can help you with any legal issues surrounding trade marks, keywords, sponsored links and their infringement, please contact
Rhys Jarman.
