No bed of roses for Marks & Spencer

On 21st May 2013, the High Court handed down its judgment in the long running case of Interflora, Inc and Interflora British Unit v Marks and Spencer Plc, which had been ongoing since 2008.

In May 2008, Google changed its policy on AdWords to allow businesses to purchase trade marks belonging to competitors as key words for the purposes of advertising. On the back of this, Marks and Spencer purchased a number of keywords and phrases utilising ‘Interflora’ thereby ensuring that a sponsored link to Marks and Spencer’s website (and its own flower delivery service) was generated when a consumer searched for ‘Interflora’.

Interflora took exception to Marks and Spencer’s strategy and issued proceedings for trade mark infringement. At the conclusion of what proved to be a hard fought, 5 year long legal battle, Justice Arnold came down in favour of Interflora by holding that Marks & Spencer’s use of the Interflora trade mark did constitute infringement since it did not enable a reasonably well-informed and attentive internet user to ascertain whether the flower delivery service referred to in Marks and Spencer’s advertisement originated from Marks and Spencer or was part of the wide reaching Interflora network. In fact, the Judge held that a significant proportion of internet users who searched for Interflora and then clicked on Marks & Spencer’s advertisements were led to believe, incorrectly, that Marks & Spencer’s delivery service was part of the Interflora network. In a separate application and as part of this case the Court considered a number of points about collecting evidence of confusion and the admissibility of such evidence. These findings were then immediately tested in the Fine & Country ruling at the Court of Appeal for which Hamlins successfully acted.

Whilst the Court’s decision will no doubt trigger alarm bells for those businesses utilising Google’s AdWords facility in the same or a similar way to Marks and Spencer, it does not follow that use of a competitor’s trade mark will always constitute infringement. The Judge in this case was heavily influenced by the fact that Interflora operated a network of affiliated businesses, of which consumers may believe Marks and Spencer to be one. Accordingly, the risk of infringement may be reduced by businesses making it clear that their goods or services are in no way connected to the trade mark owner, taking particular care if that trade mark owner operates through a network, as Interflora does.

Please contact Hayley Devlin for further information