The INTERFLORA case is based on a (seriously lengthy) reference containing 10 questions by the England and Whales High Court (EWHC) dated to May 2009. In the light of the ECJ’s Google France decisions in March 2009 the EWHC upon request by ECJ later reduced the number of questions in its reference down to 5 in mid-2010. AG Jääskinen published his opinion in early March 2011 and the final decision by the ECJ swiftly followed six month later.
The disputes itself concern the display of an ad by Marks and Spencer which looked like this [para 20]:
It remains unclear whether the ad was shown in March 2009 as a Top-Ad above the organic search results or as a Side-Ad alongside the search results on the right hand side. While the ECJ in para 20 describes the ad as a Side-Ad the EWHC describes the Ad in para 30 as a Top-Ad. The ad bears the TMs of the defendant in the title of the ad and in the Display-URL. The ad does not bear the TM of the plaintiff.
- The decision provides little to non guidance on how the national court should apply/interpret the relevant provisions in the respective case but instead highlights a large number of factors the court should consider when applying/interpreting the relevant provisions (e.g. para 49 – 53 in regard to the function of indicating origin).
- The ECJ further elaborates on the principle of the trademark functions and especially on the ‘investment function‘ (para 60 ss). Although reading it a couple of times the author however unfortunately failed to completely understand para 66. One thing the author found very interesting is that a de facto obligation for the TM proprietor to “adapt its efforts to acquire or preserve a reputation capable of attracting consumers and retaining their loyalty” is not enough to adversely affect this function“[par 64]. This ratio appears very similar to the one the ECJ used when explaining in detail in Google France why the advertising function wasn’t adversely affected.
- The court in quite some detail explores the rights vested in trademark with a reputation according to Art 5(2) TMD but somehow doesn’t really reach any surprising conclusions when coming from a civil law background which is familiar with “dilution” and “free riding”.
- In par 74 the court also highlights that a “transfer of the image of the mark” is required for “free riding“. Interesting enough the BGH explicitly rejected in its Eis.de/Bananbay (13.01.2011, I ZR 125/07) decision the idea of such an transfer in para 34.
- In par 82 the court further links the possibility of a “dilution” to the criteria if established in connection with the function of indicating origin (par 49 – 53).
All in all the decision -again- isn’t the landmark ruling advertisers and TM proprietors have been longing for which establishes easy rules as to admissibility of keyword ads. Compared to the opinion of the AG this however seems to be an advantage as the AG was pretty much suggesting a solution which was more focused on the special circumstances of the case and the fact that the chances that the function of indicating origin where especially high in this case due to the franchise system INTERFLORA is operating.
The bottom line of the decision is -once again- that keyword advertising even when using TM with a reputation is generally admissible.
This doesn’t come as much of a surprise when looking at the judges inolved, which are “the usual suspects“;
- M. Ilešič (Rapporteur in all ECJ keyword advertising cases so far),
- N. Jääskinen (Advocate General in Portakabin, Eis.de and INTERFLORA)
For more details please see below (work in progress).