The legal wrangling over brand name purchases on Google AdWords rages on, with InterFlora embroiled in a legal battle with Marks & Spencer. But who is in the right, and what precedents will the eventual court ruling set for future search campaigns?
The Advocate General of the European Court of Justice (ECJ) last week recommended that Marks & Spencer be found liable for trade mark infringement by using ‘Interflora’ as a Google AdWord.
The adviser to the Court handed down his non-binding opinion in this key digital trade mark case on questions referred to the ECJ by the High Court of Justice of England and Wales. The ECJ ruling, which may well be in-line with the advice of Advocate General Niilo Jääskinen, is likely to follow in a few months’ time.
The High Court of Justice had referred questions to the ECJ in 2009 during a legal battle between Interflora and Marks & Spencer. Interflora had initiated litigation proceedings after Marks & Spencer bought their rival’s trade mark as a Google AdWord so that when an internet-user entered ‘Interflora’ into the search engine, an advert for Marks & Spencer Flowers would appear.
Interflora claimed this was in breach of their trade mark rights over the word ‘Interflora’.
A definitive ruling handed down by the ECJ in March 2010 established that Google was not liable for trade mark infringement by selling the advertising service to rival companies.
However, the decision crucially left the purchaser’s liability for infringement open to question.
That particular case saw Google pitted against several high-profile brand owners, including Louis Vuitton owner, LVMH. Today’s proposal would place liability with the purchaser of the AdWord where consumers are led to believe goods available through the AdWord link were the trade mark owners.
Kirsten Gilbert, Partner at Marks & Clerk Solicitors, comments: “Interflora will be the victor if today’s recommendations are followed. The Advocate General considers that use of a rival trade mark as a Google AdWord constitutes trade mark infringement where the consumer is unable to determine whether or not the advert is for the brand they originally searched for.
“Last year’s Google case established that purchasing a rival’s brand name as an AdWord is not trade mark infringement per se. But while online consumers are much more informed than fifteen years ago, rivals should shy away from using each other’s trade marks for their own commercial purposes where doubt or ambiguity as to the origin of the goods or services could arise.
“This opinion is based heavily on the particular facts here – namely that the trade mark ‘Interflora’ denotes a commercial network of florists providing certain services and products. However, it will bring some comfort to brand owners that in such situations where members of the public could believe that the competitor is a member of their commercial network, they can prohibit the use of their trade mark as an AdWord.
“After last year’s ruling in its favour, Google will have to wait for the Court’s decision in this case before declaring a decisive victory. Although not represented in this legal battle, it is still directly affected – the AdWord service is a major source of revenue for the California-based corporation. With this opinion, Google’s customers may well reconsider how extensively they want to use a competitor’s mark as an AdWord.”