keywords trade mark infringement
Keywords trade mark infringement – The interflora case is reviewed in this article.
On the 12 August 2009 the High Court of Justice of England and Wales referred the case of:
Interflora Inc, Interflora British Unit v Marks & Spencer plc, Flowers Direct Online Limited to the European Court of Justice in Luxembourg (ECJ)
for a preliminary ruling, case C-323/09.
On the 24 March 2011, advocate general Jaaskinen (AG) presented his legal opinion on the questions referred by the High Court of Justice of England and Wales.
At the time of writing, the ECJ`s ruling is still pending however the AG`s opinion is a strong indication of how the ECJ is likely to reply.
This post is primarily concerned with keywords trade mark infringement and the interpretation of:
(i) Article 5 First Directive 89/104/EEC of the Council, of 21 December 1988, to Approximate the Laws of the Member States Relating to Trade Marks; and
(ii) Article 9 of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community Trade Mark as opined by the AG.
Article 5 states as follows:
“Article 5 – Rights conferred by a trade mark
1. The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
a. any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered;
b. any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark.
2. Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.
3. The following, inter alia, may be prohibited under paragraphs 1 and 2:
a. affixing the sign to the goods or to the packaging thereof;
b. offering the goods, or putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder;
c. importing or exporting the goods under the sign;
d. using the sign on business papers and in advertising.
4. Where, under the law of the Member State, the use of a sign under the conditions referred to in 1(b) or 2 could not be prohibited before the date on which the provisions necessary to comply with this Directive entered into force in the Member State concerned, the rights conferred by the trade mark may not be relied on to prevent the continued use of the sign.
Paragraphs 1 to 4 shall not affect provisions in any Member State relating to the protection against the use of a sign other than for the purposes of distinguishing goods or services, where use of that sign without due cause takes unfair advantage of, or is detrimental
to, the distinctive character or the repute of the trade mark.”
In brief the facts of the main proceedings, before the High Court of Justice, are:
inter alia that Google operates an Internet search engine which displays both organic and paid search results (the so called “Ad Words“). This case concerns the Ad Words tool but is not about Google it relates to the advertisers that use Ad Words. Namely that Marks and Spencers (M&S), a well known UK retail outlet, used the registered trade mark of Interflora Inc, a well known flower delivery network, through Ad Words, infringing Interflora`s registered trade mark rights in Interflora.
It is pretty much common knowledge how Ad Words works. It is important to note that there is the reservation and/or bidding on a so called “keyword” (which is identical to a trademark registered to an entity other than the person(s) reserving it) and then there is the advertisement itself (which may or may not also contain a registered trademark). The advertisement itself consists of some text and a link under the heading “sponsored links”.
The following are accepted as common ground, that:
1. MS reserved the keyword Interflora as well as variants made up of that keyword as keywords in connection with Ad Words.
2. That Interflora is the registered holder of the trade mark Interflora and has reputation.
3. That the actual advertisement visible to the user did not contain the trademark “Interflora”.
The High Court stayed the proceedings and referred the case to the ECJ for a preliminary ruling.
The AG`s opinion can be summarised as follows:
1. That reputation is a key differentiator. There are rights attached to all trademarks and rights attached to trade marks with a reputation.
2. For the group of questions relating to rights attached to all trademarks, replies can be found in the judgments given in 2010 in Google France and Google followed by BergSpechte, eis.de and Portkabin. These were cases relating to “use” by “competitors” (the emphasis is mine) in Internet search engine advertising.
3. That any secondary liability is immaterial in this case. In the case of Google France v. Google the ECJ have ruled that a search engine operator that references a trade mark is not “use” pursuant to Article 5 of Directive 89/104. However an advertiser does “use” a trade mark by choosing it as a keyword in a paid referencing service.
“the attitude of the referencing service provider as to the possibility of the trade mark proprietor to forbid the use of its trademarks as keywords is irrelevant …………………………….it is the advertiser who chooses a keyword identical to a trade mark of another and who uses the trade mark in relation, as the case may be, to his own goods or to those of the trade mark proprietor. This is liable to affect the origin function if the ad displayed in the sponsored link does not enable an average Internet user, or enables said user only with difficulty, to ascertain whether the goods or services referred to originate from the proprietor of the trade mark or from an undertaking economically connected to it or, on the contrary, originate from a third party” (AG)
4. There is a distinction between the use of trade mark where there is confusion as to origin and use of trade mark where the offender is trading on the goodwill of the trade mark.
5. The extent of the relevance of whether the trade mark appears in the advertisement itself will be determined by the nature of goods and services protected by the trade mark; the scope of protection registered; and the meaning and repute the trade mark has acquired through use in the relevant minds of the public.
In other words it is prima facie immaterial whether the trade mark is used just as a keyword or whether it is used as a keyword and it appears in the text of the advertisement itself. Obviously there can be no confusion if the displayed text ad dissociates the advertiser from the trade mark (e.g. comparative advertising).
6. In the case of Interflora the trade mark is sufficiently well known in relation to the specific goods and services that there is a likelihood of association with Marks & Spencers even if Marks & Spencers are mentioned in the text ad and Interflora is not.
“Consequently, an association between the trade mark of Interflora and an identical delivery service of flowers provided by M&S is possible and even likely in the mind of an average consumer seeking information about such services in the Internet”
7. With respect to dilution of a trade mark. The trade mark must have a reputation and there must be a
“link between the trade mark and a sign used by the third party in order that the use of the signs fall within the scope of Article 5(2) of Directive 89/104………… the effects of the ad in the sponsored link visible to the Internet user must be the starting point of the analysis.” (AG)
8. With respect to blurring if the trade mark does not show in the text of the advertisement and is only used as a keyword there cannot be any blurring (there can be confusion as to origin).
9. With regard to Free-riding: where a trade mark is used as a keyword, whether it appears in the advertisement or not, it can still be free-riding unless the use is fair. If there is no due cause then the use is automatically unfair.
10. Even in the situation where the proprietor of a trade mark has to compete for price per click for its own trade mark, use can still be fair.
In very broad terms, where the trade mark is the keyword but does not appear in the advertisement the display of the advertisements can still cause confusion or a likelihood of association as to the origin of the trade mark. Where the trade mark is a keyword and it appears in the advertisement, leading to an adverse effect on the trade mark, then this can still constitute infringement, even if there is no confusion or likelihood of association. In the latter case the trade mark has to have such reputation so as to have a secondary meaning.
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