The European Court of Justice has previously ruled in the Interflora case that trademarks belonging to another party could be used as Google AdWords if certain conditions are met.
However, the High Court’s latest decision has found Marks and Spencer’s use of the term ‘interflora’ in the Google AdWord program to be contrary to the ‘origin function’ of trademarks and, as such, in direct violation of the European Union Trade Mark Directive and Community Trade Mark Regulations.
This is a landmark decision and will have huge implications on businesses purchasing space for online advertisements.
Key Finding – Confused Consumers
Justice Arnold categorically ruled that the improper use of an existing trademark to advertise on search engines has the potential to confuse consumers about the origin of the products or services.
Justice Arnold observed that Marks and Spencer failed to facilitate “reasonably well-informed and reasonably attentive users” to be able to discern if the services mentioned in the Google advertisements in question were actually offered by Marks and Spencer or Interflora or by any other third party.
In addition, it appeared as if the advertisements pertained to services which were extended by Marks and Spencer on behalf of the Interflora group. Justice Arnold concluded by stating that the advertisements which appeared in the Google searches for the keyword ‘interflora’ led the ‘average’ consumer to believe that he was in fact dealing with Interflora.
An Underlying Principle – Preventing Confusion in the Minds of Consumers
Avoiding the potential for confusion in the minds of consumers about the origin of a particular product or service is an underlying principle behind trademark law. Justice Arnold, therefore, was particular about the fact that the advertisements could mislead a substantial number of consumers who might consider them to be originating from Interflora.
This is so despite the fact that a large number of consumers would differentiate between normal searches and advertisements. The case for trademark infringement is established if the mark or sign of the owner is used by the infringer to generate business through purchase of Google Adwords which have the potential to confuse end consumers.
Comment
It is important to note that Marks and Spencer has the right to appeal against the High Court Judgment. However, at this juncture, the decision is instructive for businesses purchasing Adwords as it has the effect of preventing the use of others’ trademarks as keywords for online advertising.
Businesses should be aware of the increased risks associated with purchasing marks or signs of competitors on the Google Adwords program, and ensure that their advertisements do not create confusion in the minds of consumers.
If you need advice regarding the correct use and protection of intellectual property, Rollingsons has experienced lawyers who can assist you. For more information please contact James Crichton via e-mail jcrichton@rollingsons.co.uk or by telephone on 0207 611 4848.
