The long-running trade mark dispute between Interflora and Marks and Spencer (M&S) has captivated brand owners and intellectual property lawyers since its early beginnings in 2008. The battle ensued after M&S’ used Interflora’s name as keywords to prompt Google adverts which did not actually contain the Interflora name or branding but took users to M&S’ own flower delivery service. The outcome has important implications for all brand owners and their competitors.
In May 2013 Arnold J, High Court judge, found in favour of Interflora by declaring that M&S was guilty of trade mark infringement for using Interfloras’s trade mark as a keyword. In the latest twist the Court of Appeal declared in November 2014 that, due to a number of errors of law apparent in the proceedings, the case must be allowed to go to appeal and remitted it for a retrial to the High Court.
Why was the case remitted to the High Court for a retrial?
The Court of Appeal’s decision to allow the remittance of the case for a retrial is not based on any notion that the original decision handed down by Arnold J is wrong. Rather, a retrial was ordered due to the existence of numerous errors of law in the previous decision.
Firstly, it was felt by the Court of Appeal that the High Court judge overly relied on the doctrine of ‘initial interest confusion’ when reaching his decision. This concept implies that if someone browsing the internet is initially confused into thinking that a keyword advert is potentially connected to a brand owner, other than to the brand owner to whom the keyword actually pertains, and then visits the mistaken company’s website, a trade mark infringement will have occurred.
This was criticised as having been the wrong approach to take and one which confuses the actual test for trade mark infringement. The actual test being that which is derived from the 2010 Google France decision which states that trade mark infringement takes place when a reasonably informed and observant internet user is not able, or is able to but with difficulty, to ascertain from the advertisement in question whether the goods or services being advertised originate from the real brand owner or from a third party.
Secondly, it was declared that Arnold J had wrongly placed the onus of proof on the defendant. Instead, it should have been for the claimant to show that trade mark infringement had taken place, instead of the other way round.
Finally, the Court of Appeal felt that Arnold J had admitted certain forms of evidence into the proceedings which should not have been admitted, such as for instance, thirteen witness statements, identified by a witness gathering exercise, put forward by Interflora.
Notably, the actual decision reached by the High Court was not criticised and it remains to be seen if changes based on corrections to errors of law will yield a different outcome when the case is retried. The outcome will likely depend on whether the evidence put forward does or does not show that reasonable internet users were able to ascertain from any given advertisement the actual owner or provider of the products or services being advertised.