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Interflora sues M&S over Google keywords

Could be trade mark test case

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The world's largest flower delivery firm has sued Marks and Spencer at the High Court in London for sponsoring the word 'Interflora' as a search engine keyword. The case could be an important test of how UK trade mark laws apply to keyword advertising.

Michigan-based Interflora and its UK trading arm are seeking an unspecified sum of damages and a court injunction to stop M&S bidding on its brand name. Interflora says that the British retailer has taken unfair advantage of Interflora's brand, in breach of trade mark law.

The lawsuit names Flowers Direct Online as a second defendant. The company, based in Morecambe, England, runs a flower delivery service from flowersdirect.co.uk.

In the lawsuit filed yesterday, M&S and Flowers Direct are accused of bidding for the words 'Interflora' and misspellings such as 'Intaflora' and 'Inter-flora' in Google's AdWords programme. When users searched for these terms, adverts for M&S and Flowers Direct appeared as 'sponsored links'.

Google used to work with brand owners to stop their trade marks being used by others as keywords. Controversially, it changed its policy on 5th May 2008. Now almost any word is available for sponsorship, though Google's policies still control the text of adverts that the keywords trigger.

According to the lawsuit, "when a user enters the search term INTERFLORA or similar into the Google search engine, it is the intention of that user to look for [Interflora or its associates]."

The case argues that sections 10(1) and 10(3) of the Trade Marks Act 1994 are being breached by M&S and Flowers Direct.

Section 10(1) is breached by making use of a sign which is identical to another's trade mark, in the course of trade, in relation to goods or services identical to those for which the trade mark is registered.

Section 10(3) is breached by making use of a sign which is identical or similar to another's trade mark, and where the use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the reputes of the trade mark.

Interflora says the defendants' use is detrimental to Interflora's trade mark "because there will be a blurring or dilution that will lessen the capability of the Trade Marks to distinguish [Interflora] and its goods and or services from those of others."

It says that the use of its marks enables M&S and Flowers Direct "to free-ride upon the fame of the Trade Marks, thus conferring upon themselves and/or their goods or services an unfair advantage over the Claimants and/or other traders, and/or members of the public."

Interflora's marketing director, Michael Barringer, said the company's brand is its most valuable asset.

"The Interflora brand is extremely valuable and we will not tolerate competitors taking advantage of it and infringing our rights," he said. "Throughout its history, Interflora has been forced to use legal means to prevent infringement of its valuable trade marks."

"This action represents only the beginning of a broader strategy to defend the Interflora mark against infringers," said Barringer.

M&S and Flowers Direct appeared to have discontinued their sponsorship of the 'Interflora' keywords at the time of writing.

Previous UK cases on keyword sponsorship

In March 2008, the High Court dismissed a keyword advertising lawsuit against Yahoo!. It ruled that Yahoo! did not infringe a businessman's rights by displaying ads for Sainsbury's supermarket and others when they entered his trade mark as a search term. Victor Wilson argued that his mark 'Mr Spicy' was being infringed. But the court concluded that only the plain English word 'spicy' was being sponsored, not Wilson's trade mark.

Prior to Wilson's case, the only significant UK ruling of relevance involved a dispute between recruitment agency Reed Executive and publisher Reed Business Information.

Searches at Yahoo!'s search engine for the word 'Reed' triggered the display of a banner ad for totaljobs.com, operated by Reed Business Information, on the results page. Reed Executive sued the publisher alleging trade mark infringement.

That case was brought under section 10(2) of the Trade Marks Act 1994 which requires evidence of "a likelihood of confusion on the part of the public".

Lord Justice Jacobs ruled in the Court of Appeal in 2004 that the average consumer would not be confused into thinking that a banner ad carrying the brand totaljobs.com, with no reference to Reed, was in some way connected to Reed Executive.

Lord Justice Jacob did, however, comment that if the mark used by Reed Business Information had been identical to Reed Executive's registered trade mark, the position might have been different.

Sections 10(1) and 10(3) of the Act, upon which Interflora is relying, do not require evidence of confusion.

Copyright © 2008, OUT-LAW.com

OUT-LAW.COM is part of international law firm Pinsent Masons.

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