Brussels, 26/09/2011 (Agence Europe) - In its ruling in Case C-323/09 on 22 September, the Court clarifies the scope of trade mark protection, especially in relation to indication of origin and investment in matters relating to internet referencing.
While Interflora is a trade mark belonging to the American company, Interflora Inc. (which operates a worldwide flower-delivery network), the English retailer, Marks & Spencer (M&S), which competes with Interflora for its flower sale and delivery service, selected as key words the term “Interflora” and its variants within Google's “AdWords” referencing service. As a result, when internet users entered the world “Interflora” or one of the related variants as a search term in the Google search engine, an M&S advertisement appeared. Interflora therefore took action against M&S for trade mark infringement. The High Court of Justice of England and Wales referred the matter to the EU Court of Justice on a number of issues concerning the use by a competitor, within an internet referencing service, of keywords identical to a trade mark.
First of all, the Court observes that the proprietor of the trade mark is entitled to prevent that use only if it is liable to have an adverse effect on one of the “functions” of the mark. Thus, if this is detrimental to the trade mark's: - function of indicating origin where the ad displayed on the basis of the keyword corresponding to the trade mark does not enable internet users to ascertain whether the goods or services referred to by the advertisement originate from the proprietor of the trade mark or an undertaking economically connected to it, or, on the contrary, originate from a third party. However, use of a sign identical to another person's trade mark in a referencing service such as “AdWords” does not adversely affect the advertising function of the trade mark. Also, if use is detrimental to the - investment function, when use by a competitor of a sign identical to the trade mark for identical goods or services substantially interferes with the proprietor's use of its trade mark to acquire or preserve a reputation capable of attracting consumers and retaining their loyalty. On the other hand, use by a competitor is admitted if the only consequence is to compel the proprietor to adapt its efforts to acquire or preserve a reputation capable of attracting consumers and retaining their loyalty.
Finally, regarding the detriment this could cause to the distinctive character of a trade mark with a reputation (“dilution”), and the unfair advantage gained by a competitor from the distinctive character of the trade mark (“free-riding”), the Court notes that the selection “without due cause” in a referencing service, of signs identical with or similar to another person's trade mark that has a reputation may be construed as free-riding. That is particularly likely to be the conclusion in cases in which internet advertisers offer for sale, by means of the selection of keywords corresponding to trade marks with a reputation, goods which are imitations of the goods of the proprietor of those marks. (FG/transl.jl)