The ruling was delivered today (22 July) by the European Court of Justice in a case brought by Interflora against Marks & Spencer that brand owners and trade mark lawyers believe will have significant impact on brands that use Google’s Adwords service.
The ECJ says that the practice could be prevented if “reasonably well-informed and reasonably observant internet users” are likely to be confused or that it “dilutes” the trademark.
It continues: “…..where the advertisement displayed on the internet on the basis of a keyword corresponding to a trade mark with a reputation puts forward an alternative to the goods or services of the proprietor of the trade mark with a reputation without offering a mere imitation of the goods or services of the proprietor of that trade mark, without causing dilution of the trade mark or detriment to its repute and without, moreover, adversely affecting the functions of the trade mark – such use falls, as a rule, within the ambit of fair competition in the sector for the goods or services concerned.”
The case was first brought by Interflora in the UK High Court before being referred to the ECJ in 2009. The florist claimed it was unfair that M&S should be allowed to use its trade mark as an internet search engine keyword to advertise M&S flowers.
Both Interflora and M&S declared themselves happy with the EU ruling, which has been passed back to the High Court to determine whether M&S’ use of Google’s Adwords does cause “detriment” to Interflora’s trademark.
Michael Barringer, Interflora’s marketing director says that “this judgment backs all the hard work and effort we have put in to defending the Interflora brand. People searching the internet for “Interflora” want “Interflora, the flower experts” and no one else.”
He adds: “Our customers trust us to deliver flowers at the most important times of their lives. We are very proud of the Interflora brand and want to protect it for our customers, florists and the future.”
Google says: “The Court has clearly said that it is possible for an advertiser to use a third party trademark to trigger an ad for alternative goods or services. The Court also states that such use may fall within the ambit of fair competition.”
M&S says it is “encouraged” by the judgement as it has “always believed this is fair competition.”
It adds: “However, as the case is still ongoing it would be inappropriate for us to comment any further at this stage.”
Last year the European Court of Justice ruled in favour of Google after luxury brand Moét Hennessey Louis Vuitton claimed Google’s AdWords service undermines brands and breaches European trademark law by allowing rival advertisers to purchase trademarked keywords.