Interflora v Marks and Spencer: M&S’s Google keyword ads found to infringe

What happened

From May 2008, Marks and Spencer bid on 'interflora' and related terms as keywords in Google AdWords. This meant that whenever someone searched for Interflora, an M&S advert for its own flower delivery service would appear alongside the search results. Interflora, which runs a flower delivery network made up of independently branded member florists, sued M&S for trademark infringement. The case had already been sent to the Court of Justice of the European Union for guidance on the legal tests before coming back to the High Court for a full trial on the facts.

What did the court decide in Interflora v Marks and Spencer?

The court found that M&S's adverts did not let a reasonably well informed and reasonably observant internet user work out, without difficulty, whether M&S's flower service was part of the Interflora network or not. Because Interflora operates through a network of independently branded members and also has commercial tie-ups with other retailers, the court found this made confusion about who was behind the M&S ad more likely, not less. That was enough to show the trademark's core function of indicating where goods or services come from (its "origin function") had been affected, so the keyword use infringed under Article 5(1)(a) and 9(1)(a). Interflora's separate claims that M&S had unfairly damaged its reputation or taken an unfair advantage of it failed, partly for lack of evidence and partly because, once the origin finding went against M&S, the use was treated as having "due cause", which defeated those claims.

What we learned from this

• What I'd take from this is that how your trademark operates in the real world matters just as much as the words of the law. Interflora's network of independently branded florists and its tie-ups with other retailers made it easier for the court to find that shoppers could be confused by M&S's ad.
• If you're bidding on a competitor's name, trading name or tagline as a search keyword, think about whether your advert makes it clear you're a separate business with no connection to them.
• Winning on one type of infringement claim doesn't mean winning on all of them. Interflora succeeded on origin confusion but lost on its dilution and unfair advantage arguments.

Things to be aware of

The businesses involved

What happened next

• The dispute continued to the Court of Appeal, which in 2014 overturned the High Court's infringement finding in M&S's favour.Source: Cms, November 2014
• Coverage at the time noted the High Court had ruled that M&S's use of 'Interflora' as a keyword to advertise its florist service amounted to trademark infringement.Source: The Guardian, August 2013

What others said about it

• Practical Law notes M&S argued it would be both costly and pointless for Interflora to bid on 'marks and spencer' as a keyword, a point made during argument over the commercial realities of keyword bidding.Source: Practical Law (Thomson Reuters), May 2013
• IPKat's coverage of the later Court of Appeal stage highlights how much the case turned on surveys of internet users, a reminder that evidence of actual consumer confusion can be central to keyword disputes.Source: IPKat, November 2012