Google Keywords: Interflora v M & S – Back to Square One?

November 6, 2014

If it goes on much longer (and it will), there will be interest from the saga tellers of the frozen North. The battle between Interflora and Marks and Spencer took one step forward with the publication of the Court of Appeal’s judgment on 5 November – and that promptly moved the whole process two steps back.

In Interflora Inc & Anor v Marks and Spencer Plc [2014] EWCA Civ 1403 the Court of Appeal determined that the judgment of Arnold J, which found in favour of Interflora’s claim that its trade mark was breached by M & S through its use of keywords, was flawed. In particular, the Court considered (at [151]) that:

The judge wrongly held … that the onus lies on the third party advertiser to show that the use of the sign in context is sufficiently clear that there is no real risk of confusion on the part of the average consumer as to the origin of the advertised goods or services. In our judgment the onus lies on the trade mark proprietor to establish that the advertisement complained of does not enable normally informed and reasonably attentive internet users, or enables them only with difficulty, to ascertain whether the goods or services referred to by the advertisement originate from the trade mark proprietor or an undertaking economically connected to it or, on the contrary, originate from a third party.

Getting the onus of proof wrong is pretty fundamental, but the Court of Appeal did not approve of the emphasis that Arnold J put on ‘initial interest confusion’ either (at [158]):

In our view the doctrine of initial interest confusion is therefore an unnecessary and potentially misleading gloss on the tests the Court has articulated and we think it should perform no part of the analysis of our national courts in claims of the kind before us. We consider the judge was therefore wrong to approach the matter as he did.

The Court of Appeal also expressed some considerable reservations about the evidence which was accepted at trial as to the crucial issue of ‘confusion’.

Having regard to all these factors, and the fact that this was ‘a finely judged decision’ (probably no pun intended), the Court of Appeal considered that the judgment could not stand. It considered ‘simply determining the issue of infringement for ourselves, a course which would have obvious benefits in terms of time and cost‘ but ruled that out too as their lordships had not seen all the papers etc, though there are hints in the judgment that they might well have found that there was no infringement. The case was thus remitted for retrial, which the Court thought ‘should now be relatively straightforward’ (cue hollow laughter).

Although it was not required to in view of its earlier conclusions, the Court of Appeal went on to comment on the breadth of the injunction which Arnold J had granted and on the issue of ‘negative matching’. On the latter point,  Kitching LJ observed (at [191]):

the choice and selection by a trader of a generic term as a keyword cannot be considered in isolation and as an activity separate and distinct from the Google algorithms and match types used in relation to them. Further, account must also be taken of the opportunity available to the trader to negatively match. If, having regard to all these matters, a trial judge comes to the conclusion that a trader has chosen a generic term with the object and effect of triggering the display of his advertisement in response to a search by a consumer of a term including or consisting of a sign which is the same as or similar to the trade mark of a rival then we consider it is permissible for the judge to find that the trader has used that sign in the course of trade, although indirectly and by different technical means. It is our view that in these circumstances the judge may properly find that the trader has used the sign in the course of its own commercial communications.