Interflora v Marks and Spencer: court grants EU-wide injunction over keyword advertising

What happened

After the main trial found that M&S had infringed Interflora's trademark by buying "Interflora" as a Google AdWords keyword to advertise its own flower delivery service, the two sides still disagreed on what the injunction stopping M&S would actually say. Interflora wanted detailed wording covering both direct bidding on its name and a "failure to negative match" certain search terms. M&S wanted something narrower and more specific, limited to the UK. The court had to decide which approach to take, and whether the injunction protecting Interflora's Community trademark would apply only in the UK or across the whole EU.

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

The court agreed that M&S had "used" the Interflora sign even through broad keyword matching without excluding certain terms, but found that Interflora's proposed wording on that point went further than the case it had actually pleaded. Rather than drafting a highly specific injunction for either side, the court granted a conventional general injunction restraining further infringement, saying this was a proportionate approach and that any future argument over new advertising wording could be dealt with later through a separate declaration. Because M&S hadn't shown that its conduct left the trademark's function unaffected in other EU countries, the injunction covering the Community trademark applied across the EU, not just the UK.

What we learned from this

• What I'd take from this is that winning the infringement argument is only half the job. The fight over what the injunction actually says, and how far it reaches, can be just as hard fought.
• A general injunction is often what courts prefer over a narrowly drafted one, leaving future disputes to be resolved separately rather than trying to anticipate every scenario now.
• If a trademark covers the whole EU, the business found to infringe needs to show its conduct doesn't affect the mark elsewhere, or the order can follow it across the EU.
• Arguments about keyword advertising wording, like negative matching certain search terms, need to be properly pleaded from the start rather than raised later as the case develops.

Things to be aware of

The businesses involved

What happened next

• The Guardian reported that the High Court had earlier ruled M&S's use of the Interflora name to advertise its florist service amounted to trademark infringement.Source: The Guardian, August 2013
• CMS noted that the dispute between M&S and Interflora continued in the English courts, with a further judgment handed down by the Court of Appeal in late 2014.Source: Cms, November 2014