In December 2008 we jointly filed a lawsuit with Interflora Incorporated based in Illinois against Marks and Spencer and Flowers Direct Online for breach of trade mark law.
Prior to May 2008, Google’s policy throughout the whole of Europe was to allow trade mark owners to object to the use of their marks in this way by competitors. This changed in the UK and Ireland in May 2008 but it is still the position in mainland Europe. Just because Google’s AdWords policy allows this kind of advertising, it doesn’t make it legal.
Marks and Spencer and Flowers Direct started bidding on the wordmark ‘Interflora’ which is a registered trade mark. Our case argues that sections 10 (1) and 10 (3) of the Trade Marks Act 1994 are being breached by Marks and Spencer and Flowers Direct.
Section 10 (1) is breached by making use of a sign which is identical to another’s trade mark, in the course of trade, in relation to goods or services identical to those for which the trade mark is registered.
Section 10 (3) is breached by making use of a sign which is identical or similar to another’s trade mark, and where the use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.
Below is an example of Marks and Spencer bidding on the wordmark ‘Interflora’ which is a registered trade mark.
Commenting on the legal action our Marketing Director, Michael Barringer says,
We consider this is a clear case of trade mark infringement; it’s the internet equivalent of asking for a Coca Cola and being given a Pepsi.
By advertising on ‘Interflora’ Marks & Spencer and Flowers Direct are free-riding upon the fame of our brand. Our brand is our most valuable asset and we will not tolerate competitors taking advantage of it and infringing our rights. We are very proud of the rich history we have built on our brand and protecting our brand is key.
The legal action we have started represents the beginning of a broader strategy to defend the Interflora mark against infringers.
In March 2009 our case against Flowers Direct was settled with Flowers Direct agreeing to cease bidding on ‘INTERFLORA’ for the time being.
The High Court in London has decided that the law is not settled on whether brand bidding on a competitor’s brand is lawful and has referred certain questions to the European Court of Justice for determination. This clearly goes against Marks and Spencer’s position that the practice is “not unlawful”. The High Court has denied Marks & Spencer permission to appeal to the Court of Appeal in respect of the nature of the questions referred to the European Court of Justice.
In his judgement, Mr Justice Arnold commented that Google’s decision to operate a different policy in the UK and Ireland to that in the rest of Europe is “fairly remarkable given that the relevant law is, or should be, essentially the same throughout Europe.”
We are currently waiting for the European Court of Justice to deliver their ruling, watch this space…
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