Lawyers react to Interflora decision

22-05-2013

Lawyers poring over the UK High Court’s ruling in Interflora v Marks & Spencer say the advertising keyword dispute is important but won’t have wide-ranging implications.

The court found on Monday that retailer M&S’ use of ‘Interflora’ Google AdWords that produced search results for its flower delivery services did infringe the trademarks of Interflora, a flower delivery network.

In a 326-paragraph ruling, Mr Justice Arnold said M&S’ adverts prevented the “reasonably well-informed and reasonably attentive” Internet user from discerning who owned the adverts.

The ruling in Interflora’s favour has prompted a discussion about how companies should approach bidding for keywords matching someone else’s registered trademark, and whether this practice will now be more restricted.

“Marketing departments will now be scratching their heads and wondering if their keyword purchasing strategies are dead in the water,” said Vanessa Barnett, technology and media partner at Charles Russell LLP.

But the decision is fairly fact specific and is unlikely to dramatically change the keyword advertising law landscape, said Rob White, senior trademark attorney at law firm Avidity IP.

“The starting point in the law is that using a trademark as a keyword is okay, provided that it is used in a way that doesn’t suggest it is connected with a trademark proprietor,” he added.

His views were echoed by Chris McLeod, first vice president of the Institute of Trademark Attorneys, who said the ruling is clearly specific to the very extensive facts and submissions in the case.

“It takes a long time for the judgment to set out the full background, which is indicative of how it probably can’t be applied particularly broadly,” said McLeod, who is also director of trademarks at Squire Sanders LLP.

“I would be cautious to say that no one can use someone else’s trademark as a keyword from now on.”

This means the extensive appetite for keyword bidding is unlikely to dry up because of the ruling, said McLeod, especially as companies know that aggrieved parties like Interflora, which sued M&S five years’ ago, will have to have “deep pockets” to pursue litigation.   

“But they might think very thoroughly about buying trademarks of well known brand owners,” said White. “Especially companies operating franchises or with networks of licensees, which could lead Internet users to think that there is a connection, and for a brand owner to try to rely on the Interflora ruling.”

A strong focus of the ruling was on the so-called reasonably well-informed and reasonably attentive Internet user, who was deemed unable to distinguish between M&S’ and Interflora’s services in 2008, when M&S bought the AdWords.

White noted that as a greater number of Internet users become more tech savvy, it will be harder to show that a significant proportion of those users will be confused by paid-for and natural search engine results.

“As time goes by, more and more regular Internet users will be clued up about search engines and adverts. Apart from in cases of a flagrant disregard for or abuse of a registered trademark, the likelihood of succeeding in AdWord cases is likely to reduce over time.”

But McLeod said while people are becoming more familiar with the Internet, there is still scope for continued confusion over paid-for and general search results, with some Internet users’ sophistication being “questionable”.

To remedy this problem in the meantime, said Barnett, brands should consider what they can place in the text of their ads to make it obvious that there is no connection with another trademark owner. 

“I wonder if things would have gone differently if M&S had shouted out ‘an independent flower delivery network’ in the ads?" she said. "In my view, this an important thread that still needs exploring.”

This article was first published on 23 May 2013 in World IP Review

interflora, marks & spencer, adwords, mr justice arnold

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