A Blooming Result for Brand Owners



The decision from the Court of Justice of the European Union (CJEU)  in the case of Interflora vs Marks & Spencer (M&S) is a welcome boost for brand owners seeking to protect their brand online, but a loophole may provide a get-out for competitors, according to trade mark attorneys at Withers & Rogers LLP.

The decision is the latest in a series of cases seeking to clarify the extent to which companies may use the trademarks of leading brands in keyword advertising in order to drive sales of their own products and services. In 2009, global flower retailer, Interflora, brought a trade mark infringement action to challenge M&S for bidding on its brand name as a Google Adword. In their view, M&S should not be permitted to promote its own flower business by advertising alongside search results for the word ‘Interflora’.  The M&S link would appear directly below Interflora’s in the search engine’s “sponsored links” section.

The CJEU has today ruled that the trade mark owner is entitled to prohibit third parties from using keywords which are identical to their registered trade mark, where such use takes unfair advantage of or is detrimental to reputation or distinctive character of the brand owner’s trade mark, or alternatively where such use would affect one of the functions of the trade mark and relates to identical products or services to those of the brand owner.

Fiona McBride, partner and trade mark attorney at Withers & Rogers LLP, said:

“A brand owner may now be able to prevent a third party’s use of its trade mark as a keyword where it is shown that its use takes advantage of, or dilutes the distinctive character and reputation of their mark, or is detrimental to maintaining a reputation which attracts and retains customer loyalty.

“This sits alongside a brand owner’s existing right to take action against a competitor’s use of its trade mark as a keyword which triggers an advertisement if there is a risk that internet users could be left uncertain about whether it emanates from the brand owner, a related company or an unconnected third party.

“However, whilst the decision seems to be in overall favour of the brand owner, the Court has stipulated that a competitor may be able to avoid such action if they can show that their advertisement simply draws the consumer’s attention to their competing product.  Whilst this may provide a get-out for some competitors, this latest decision may still act as a deterrent to many.


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