UK Court of Appeal orders re-trial in Interflora v M&S keyword advertising battle
16 January 2015
In the latest decision in the long-running dispute between Interflora and Marks and Spencer (‘M&S’), which concerns M&S’ use of the INTERFLORA trade mark in internet keyword advertising, the UK Court of Appeal (‘CoA’) has ordered that the case undergo re-trial in the High Court. In doing so, the CoA overturned Mr Justice Arnold’s (‘Arnold J’s’) earlier decision in favour of Interflora by allowing M&S’ appeal.
At first instance, Arnold J concluded that the use of INTERFLORA by M&S unduly directed consumers to its website causing them to believe that the services offered by M&S were associated with Interflora when this was not the case.
In allowing M&S’ appeal, the CoA highlighted a number of errors in law made by Arnold J, including his:
- taking into account the doctrine of “initial interest confusion”, namely where a consumer is initially confused as to the origin of the goods and services, but continues to make a purchase in the knowledge that the parties are unconnected. Arnold J had given weight to this consideration, but the CoA was of the opinion that introducing this doctrine was “not helpful”; and
- asserting that the onus of proof in this instance is on the advertiser to show that the use of the particular sign is suitably clear so that there is no risk that consumers would misconstrue the origin of the goods and services. The CoA stressed that, as matter of principle, the burden of establishing the necessary elements for a claim of trade mark infringement must lie upon the party making the allegation (i.e. Interflora and not M&S).
These particular points will need to be treated with care during the re-trial. The resulting decision ought to expand the principles governing trade mark infringement by way of search advertising and create a clearer legal framework suitable to these circumstances.
The CoA noted that they had considered determining the infringement issue in this case, but opted to send the case back to the High Court for re-trial given that it could not fairly assess the merits of the case without hearing all the evidence relevant to it.
It seems that this case will continue to rumble on. However, this does not detract from the importance of the misuse of trade marks online, including in search advertising. Brand owners should be aware that, in appropriate circumstances, such acts can be prevented by way of trade mark infringement proceedings.
Trade Mark group
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This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.
© Withers & Rogers LLP, January 2015