Marks & Spencer may be found liable of trade mark infringement for using Interflora as a Google AdWord, if a European Court of Justice (ECJ) ruling follows the recommendation made by the Advocate General Niilo Jääskinen.
The adviser to the Court handed down his non-binding opinion in this digital trade mark case on questions referred to the ECJ by the High Court of Justice of England and Wales.
The High Court of Justice had referred questions to the ECJ in 2009 during a legal battle between Interflora and Marks & Spencer.
Interflora initiated litigation proceedings after Marks & Spencer bought its trade mark as a Google AdWord so when an internet-user entered Interflora into the search engine, an advert for Marks & Spencer Flowers would appear.
Interflora claimed this was in breach of its trade mark rights over the word Interflora.
A definitive ruling handed down by the ECJ in March 2010 established Google was not liable for trade mark infringement by selling the advertising service to rival companies.
However, the decision left the purchaser’s liability for infringement open to question. That particular case saw Google pitted against several high-profile brand owners, including Louis Vuitton owner, LVMH.
Today’s proposal would place liability with the purchaser of the AdWord, where consumers are led to believe goods available through the AdWord link are the trade mark owners.
Kirsten Gilbert, partner at intellectual property specialist Marks & Clerk Solicitors, said: “Interflora will be the victor if today’s recommendations are followed. The Advocate General considers use of a rival trade mark as a Google AdWord constitutes trade mark infringement where the consumer is unable to determine whether or not the advert is for the brand they originally searched for.
“Last year’s Google case established purchasing a rival’s brand name as an AdWord is not trade mark infringement per se. But while online consumers are much more informed than 15 years ago, rivals should shy away from using each other’s trade marks for their own commercial purposes where doubt or ambiguity as to the origin of the goods or services could arise.
“This opinion is based heavily on the particular facts here – namely the trade mark Interflora denotes a commercial network of florists providing certain services and products. However, it will bring some comfort to brand owners in such situations where members of the public could believe the competitor is a member of their commercial network, they can prohibit the use of their trade mark as an AdWord.
“After last year’s ruling in its favour, Google will have to wait for the Court’s decision in this case before declaring a decisive victory. Although not represented in this legal battle, it is still directly affected – the AdWord service is a major source of revenue for the California-based corporation. With this opinion, Google’s customers may well reconsider how extensively they want to use a competitor’s mark as an AdWord.”
The ECJ ruling is likely to follow in a few months’ time.