Posts Tagged 'INTERFLORA'

*ECJ Decision in C-323/09 INTERFLORA – ‘Same, Same But A Different Trademark Function’

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]:

Continue reading ‘*ECJ Decision in C-323/09 INTERFLORA – ‘Same, Same But A Different Trademark Function’’

*AG’s Opinion in C-323/09 Interflora – Brief Analysis

Advocate General (AG) Jääskinen delivered his opinion on the 24th of March on the 7th ECJ Keyword Advertising case: C-323/09 Interflora Inc Interflora British Unit v Marks & Spencer plc Flowers Direct Online Limited. For a short summary on the AG’s main points please see the IPKats (in English) or the Links&Law website  (in German).

Other than reported in some newspapers the author can’t see a big ‘win‘ for TM owners as the AG repeatedly stresses the general admissibility of keyword advertising [par 45, 45] and the need to promote competition and well informed users [par 99].

  • The AG highlights that there is a special ‘secondary meaning‘ in regard to the trademark INTERFLORA (due to its franchise system [par 46 – 48]) while at the same time, the trademark itself is exceptionally distinctive or even unique [par 72].  Thus even if the court established an infringement based on Art 5 (1) TMD, the ratio of this decision will be difficult to expand onto other keyword advertising decisions.
  • Concerning the protection granted by Art 5(2) TMD the court elaborates on the preconditions of a mental link between trade mark and the keyword [par 65 ss]. The AG’s opinion is, that this precondition is fulfilled “in the rather exceptional case of the INTERFLORA trade mark” [par 72]. Although the AG finds the precondition of a mental link to be fulfilled in this special case, he later states that the M&S ad did not lead to ‘blurring‘ [par 91], ‘tarnishment‘ [par 92] or might be seen as unfair ‘free riding‘ [par 105]. As a consequence the AG didn’t see any infringement under Art 5 (2) TMD.

Continue reading ‘*AG’s Opinion in C-323/09 Interflora – Brief Analysis’

*UK reference for preliminary ruling on Keyword Advertising – Interflora v Marks&Spencer

high court of justiceAs I’ve just learnt on the IPKats website the questions referred by the England and Whales Hight Court of Justice at the 22nd of May 2009 on Interflora, Inc. Interflora British Unit v Marks and Spencer PLC Flowers Direct Online Limited [2009] EWHC 1095 (Ch) have just been published on the Curia website.

Reading the reference is a bit encumbered by the fact that apparently someone has forgotten to add the numbers in front of each questions. This makes it slightly more difficult to read. Thus I’ve added the numbers in front of each paragraph, added titles to the three sections and added some comments.

[Liability of the advertiser]
1. Where a trader [advertiser] which is a competitor of the proprietor of a registered trade mark and which sells goods and provides services identical to those covered by the trade mark via its website (i) selects a sign which is identical (in accordance with the Court’s ruling in Case C-291/00) with the trade mark as a keyword for a search engine operator’s sponsored link service, [a keyword suggested by Google?] (ii) nominates the sign as a keyword, [selects the keyword himself?] (iii) associates the sign with the URL of its website, [creates and ad?] (iv) sets the cost per click that it will pay in relation to that keyword, (v) schedules the timing of the display of the sponsored link and (vi) uses the sign in business correspondence relating to the invoicing and payment of fees or the management of its account with the search engine operator [uses the sign in AdWords to manage its account?], but the sponsored link does not itself include the sign or any similar sign [an “Adv-“], do any or all of these acts constitute “use” of the sign by the competitor within the meaning of Article 5(l)(a) of First Council Directive 89/104/EEC1 of 21 December 1988 (“the Trade Marks Directive”) and Article 9(l)(a) of Council Regulation 40/942 of 20 December 1993 on the Community trade mark (“the CTM Regulation”)?

2. Is any such use “in relation to” goods and services identical to those for which the trade mark is registered within the meaning of Article 5(l)(a) of the Trade Marks Directive and Article 9(l)(a) of the CTM Regulation?

3. Does any such use fall within the scope of either or both of:
(a) Article 5(l)(a) of the Trade Marks Directive and Article 9(l)(a) of the CTM Regulation; and
(b) (assuming that such use is detrimental to the distinctive character of the trade mark or takes unfair advantage of the repute of the trade mark) Article 5(2) of the Trade Marks Directive and Article 9(l)(c) of the CTM Regulation?

4. Does it make any difference to the answer to question 3 above if:
(a) the presentation of the competitor’s sponsored link in response to a search by a user by means of the sign in question is liable to lead some members of the public to believe that the competitor is a member of the trade mark proprietor’s commercial network [the confusion issue] contrary to the fact; or
(b) the search engine operator does not permit trade mark proprietors in the relevant Member State of the Community to block the selection of signs identical to their trade marks as keywords by other parties? [AdWords trademark policy issue]

[Liability by Google/AdWords]
5. Where the search engine operator (i) presents a sign which is identical (in accordance with the Court’s ruling in Case C-291/00) [Article 5(1)(a) … must be interpreted as meaning that a sign is identical with the trade mark where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer.] with a registered trade mark to a user within search bars located at the top and bottom of search pages that contain a sponsored link to the website of the competitor referred to in question 1 above, (ii) presents the sign to the user within the summary of the search results, [in the organic search results?] (iii) presents the sign to the user by way of an alternative suggestion when the user has entered a similar sign in the search engine, [“Do you mean”-function] (iv) presents a search results page to the user containing the competitor’s sponsored link [not as a part of the organic search results] in response to the entering by the user of the sign and (v) adopts the user’s use of the sign by presenting the user with search results pages containing the competitor’s sponsored link [only the user uses the sign!], but the sponsored link does not itself include the sign or any similar sign [“Adv-“], do any or all of these acts constitute “use” of the sign by the search engine operator within the meaning of Article 5(l)(a) of the Trade Marks Directive and Article 9(l)(a) of the CTM Regulation?

6. Is any such use “in relation to” goods and services identical to those for which the trade mark is registered within the meaning of Article 5(l)(a) of the Trade Marks Directive and Article 9(l)(a) of the CTM Regulation?

7. Does any such use fall within the scope of either or both of:
(a) Article 5(l)(a) of the Trade Marks Directive and Article 9(l)(a) of the CTM Regulation; and
(b) (assuming that such use is detrimental to the distinctive character of the trade mark or takes unfair advantage of the repute of the trade mark) Article 5(2) of the Trade Marks Directive and Article 9(l)(c) of the CTM Regulation?

8. Does it make any difference to the answer to question 7 above if:
(a) the presentation of the competitor’s sponsored link in response to a search by a user by means of the sign in question is liable to lead some members of the public to believe that the competitor is a member of the trade mark proprietor’s commercial network contrary to the fact; or [confusion issue again]
(b) the search engine operator does not permit trade mark proprietors in the relevant Member State to block the selection of signs identical to their trade marks as keywords by other parties? [AdWords TM policy issue again]
[Directive 2000/31 & accessory liability]
9. If any such use does fall within the scope of either or both of Article 5(l)(a) of the Trade Marks Directive/Article 9(l)(a) of the CTM Regulation and Article 5(2) of the Trade Marks Directive/Article 9(l)(c) of the CTM Regulation:
(a) does such use consist of or include “the transmission in a communication network of information provided by a receipt of the service”, and if so does the search engine operator “select or modify the information”, within the meaning of Article 12(1) of European Parliament and Council Directive 2000/31/EC3 of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (“the E-commerce Directive”)?
(b) does such use consist of or include “the automatic, intermediate and temporary storage of information, performed for the sole purpose of making more efficient the information’s onward transmission to other recipients of the service upon their request” within the meaning of Article 13(1) of the E-commerce Directive?
(c) does such use consist of or include “the storage of information provided by a recipient of the service” within the meaning of Article 14(1) of the E-commerce Directive?
(d) if the use does not consist exclusively of activities falling within the scope of one or more of Article 12(1), 13(1) and 14(1) of the E-Commerce Directive, but includes such activities, is the search engine operator exempted from liability to the extent that the use consists of such activities and if so may damages or other financial remedies be granted in respect of such use to the extent that it is not exempted from liability?

10. If the answer to question 9 above is that the use does not consist exclusively of activities falling within the scope of one or more of Articles 12-14 of the Ecommerce Directive, may the competitor be held jointly liable for the acts of infringement of the search engine operator by virtue of national law on accessory liability?”

*UK: Reference for a Preliminary Ruling to come – Interflora v M & S

IMG_1720The UK High Court of Justice in Interflora v. Marks and Spencer will join the German Bundesgerichtshof, the French Cour de Cassation, the Dutch Hoge Raad der Nederlanden, as well as the Austrian Oberster Gerichtshof  in asking the ECJ for a preliminary ruling on the issue of the use of a trademark (Art 5 (1) Trade Mark Directive) in the practice of Keyword Advertising. Justice Arnold has asked the parties to submit proposals for questions, but as the parties haven’t yet been able to agree on a set of questions, a hearing will intersect before the court submits its questions to the ECJ. Nevertheless, a very interesting argument can be found in the decision: Interflora complained that the change of Google’s trademark-complaint policy has already had a direct effect on its advertising costs:

“Interflora’s bidding costs for their keywords during the nine days leading up to Valentine’s Day increased from 2p per click in 2008 to 23-28p per click in 2009,” said the High Court ruling. “Interflora estimate that in total their costs will have increased by about $750,000 in the year from 5 May 2008.”

A second case, a dispute between L’Oréal  and eBay is also scheduled to be brought before the ECJ.  I highly recommend (-first printing the 30 pages-) reading the Interflora decision as Judge Arnold has listed in very great detail, all of the other references for preliminary rulings cited above!

Other websites covering this issue:
IPKat.com
Out-Law.com (slightly biased.. 😉 )

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