Interflora versus Marks & Spencer court action

by Ann Bampton on September 29, 2009

In response to recent blog postings regarding our legal case with Marks & Spencer we believe Marks & Spencer’s use of our trade mark ‘Interflora’ is a trade mark infringement.  We have seen our advertising costs increase as a result of Google’s Adwords Policy Change. 

The law in the UK is still unclear on whether buying a keyword that matches another firm’s trade mark is lawful and we are determined that this should be clarified once and for all…

•    Click here to see the process an advertiser goes through with Google to purchase an Adword.

We are very serious about protecting our brand name ‘Interflora’.   Our brand name is also a registered trade mark and the whole idea of registering marks is to protect them from mis-use by third parties.

This is the key reason we have invested considerable time, money and resource over many years to monitor usage of our trade mark and take action against any third party mis-using our valuable intellectual property.

We are in a very competitive market and as the brand leader it is imperative that we protect our position within that market   The position we have taken on brand protection is to ensure our brand name ‘Interflora’ remains distinctive of us and continues to be recognised as the world’s leading flower delivery service.

We strongly feel that Marks and Spencers’ use of our trade mark on Google takes unfair advantage of our brand and is trade mark infringement. A recent ruling of the European Court of Justice in a case about L’Oreal perfumes supports our position.  In that case, the European Court of Justice ruled that where someone rides on the coat-tails of a famous trade mark in order to benefit from the power of attraction, reputation and prestige of that mark in order to exploit the marketing effort of the brand owner then that is unlawful.  We believe that this is what Marks & Spencer is doing.

Also Google operates different policies on Trade Mark usage throughout Europe for example in France they do not allow advertisers to bid on competitors’ trade mark terms.  We are therefore delighted that our case is being presented to the European Court of Justice and look forward to the law throughout the European Union being harmonised on this issue and we strongly believe this will be in favour of trade mark owners.

There are currently several cases pending at the European Court of Justice and they all raise various questions relating to trade mark infringement and Google AdWords, they are:

France –     Google France, Google Inc v Louis Vuitton Malletier
Google France v Viaticum, Luteciel  *
Holland –    Portakabin Limited and Portakabin BV v Primakabin BV
Austria –    Die BergSpechte Outdoor Reisen und Alpinschule Edi Koblmuller GmbH v Gunter Guni and Reisen (“BergSpechte”)
Germany –    Bananabay

* The Advocate General’s Opinion on this case was published on 22 September 2009.

The questions our case raises with the European Court of Justice are different and more detailed than the cases referred to above and expressly questions the position where a search engine operator (Google in our case) does not allow trade mark owners to block competitors bidding on their brands.

•    click here to see the questions The Honourable Mr Justice Arnold has raised with the European Court.

Latest news  ……..

….. following the publication of the Advocate Generals opinion in the case of Google France & Google Inc v Louis Vuitton Malletier, Google France v Viaticum & Luteciel and Google France v CNRRH, Pierre-Alexis Thonet, Bruno Raboin & Tiger, franchisee Unic our Marketing Director Michael Barrringer has issued the following statement:

“Interflora is committed to protecting its international reputation and will continue to take action against anyone using its trade mark without permission.  The latest statement on AdWords is only an ‘opinion’ with no legal effect and will not change our strategy.

The cases brought by the Louis Vuitton and other French rights holders against Google are different from our case against Marks & Spencer.  Interflora is suing its competitor, M&S, not the search engine and the opinion does not deal with competitor bidding. The opinion focuses on customer confusion which again is not part of our case.  The opinion says that Google may be liable in circumstances which need to be determined by national law and it also leaves many questions unanswered.  Ultimately only the UK court (with guidance from the European Court of Justice) can decide whether the AdWords programme infringes our trade marks.”

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Ann Bampton

Post category: Industry News, Interflora News, News  

{ 4 comments… read them below or add one }

Carol Briers 10 Oct 2009 at 9:47 am

when will the european court of justice be hearing your case?

Matt Dean 27 Jan 2010 at 5:46 pm

Any update? This is a landmark case which effects a huge number of adwords advertisers.

cabinguy 05 Aug 2010 at 4:58 pm

I’m pretty sure that the Dutch courts ruled against Portakabin in July this year.

cabinguy 14 Sep 2010 at 5:41 pm

I would love to know the outcome too. Please post if you know.

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