The High Court of England and Wales ordered Marks & Spencer on May 21, 2013 to pay Interflora for damages in Google AdWords case. This litigation, ongoing since 2008, marked a new chapter in the AdWords and trade marks matter.
The Court held that "The M&E advertisements which are the subject of Interflora’s claim did not enable reasonably well-informed and reasonably attentive internet users to ascertain whether the service referred to in the advertisements originated from [M&S or Interflora] ... On the contrary, as of 6 May 2008, a significant proportion of the consumers who searched for “interflora” and the other signs, and then clicked on M&S’s advertisements displayed in response to those searches, were led to believe, incorrectly, that M&S’s flower delivery service was part of the Interflora network."
That is the main reason why the Court upheld the Interflora claim against Marks and Spencer providing this company (Marks and Spencer) used the ‘Interflora’ trade mark as a Google AdWord to advertise its M&S Flowers & Gifts, commiting a trade mark infringement. In conclusion, Marks and Spencer cannot bid on the trademarked term ‘Interflora’ in the Google AdWords programme.
Although this topic is trendy at the moment, it is not a new one. There have been similar controversies that started years ago involving well-known trade marks, such as TEFAL ACTIFRYER, BMW and Verimark, to name but a few.
The Court of Justice of the European Union (CJEU) has ruled on this question in different cases, included Interflora v Marks & Spencer (Case C-323/09) on 22 September, 2011, in accordance with previous decisions, that infringement is not involved “provided that the pop-up ad makes it quite clear to a reasonably savvy internet user that there is no connection between the product being advertised and the owner of the trade mark”. In other words, the ad must not mislead.
The decision of the CJEU was based on the ‘average consumer’ doctrine. This means that the average consumer who searches the Internet to find a product or a specific trade mark should know that the search engine will find links to competitive products and this does not cause likelihood of confusion. So, as long as the Adword does not confuse consumers, there is no reason to find unfair competition or trade mark infringement.
The doctrine of the ‘average consumer’ referred in the CJEU ruling, however, is not uniformly followed by judges outside Europe. For instance, the United States Court of Appeals recognised in the Australian Gold Inc. v. Hatfield case on 7 February, 2006 (436 F.3d 1228 (10th Cir. 2006) the theory of initial-interest confusion when “a consumer seeks a particular trademark holder's product and instead is lured to the product of a competitor by the competitor's use of the same or a similar mark.”
In this context, Google announced an update to its AdWords trademark policy that streamlines the rules on using third-party trademark keywords in campaigns. With the update, from now on Google has a global policy that allows advertisers to bid on "google-legal-law-featured competitor third-party trademark keywords". The update states that since April 2013 keywords that were restricted as a result of a trademark investigation are no longer restricted in China, Hong Kong, Macau, Taiwan, Australia, New Zealand, South Korea and Brazil. While one cannot prevent the use of trade marks as keywords in the affected regions, trademark owners will still be able to complain about the use of their trademark in AdWords.
This is an unresolved issue with different possibilities of interpretation and until we have a clear regulation, it is going to be possible to buy as an Adword the trademark of other businesses without infringing such trademark in Europe according to CJEU, but possibly infringing it in other territories. Therefore, litigation over the issue of Adwords v Trade marks will continue.
Written by Antonio Torres
Imagen de Google Inc..