Generally, unless specific defences set out in UK or EU legislation and case law are met, owners of registered trade marks can prevent others from using identical signs in respect of goods or services which are the same as or similar to those for which the mark is registered. Does that monopoly extend to keywords used in online advertising?
In answering questions referred by the High Court in the case of Interflora v Marks & Spencer1, the Court of Justice of the European Union (CJEU) has provided welcome guidance on when the use of another’s trade mark as a keyword will constitute an infringement.
Using the Google AdWords service, M&S selected the keyword “Interflora” (and other variations of the name) so that when users searched for those terms, a M&S advertisement appeared at the top of the Google search page in the Sponsored Links section (i.e. in a section apart from the ‘natural’ search results). The AdWords service does not prevent competitors from selecting a rival’s keyword, and in fact auctions off the order of the display to any party prepared to pay.
The advertisement linked to the M&S online flower shop, which provides the same goods and services that Interflora offers under its trade mark (this was a case of so-called “double identity”). Interflora claimed that such use was trade mark infringement.