Marks & Spencer had purchased Google Ad-words for Interflora’s trademarks to promote Marks & Spencer’s online flower delivery service. If an internet user did a Google search for ‘Interflora’ a sponsored link for M&S was generated. Interflora brought proceedings against M&S claiming that this was an infringement of Interflora’s trade marks.
This is the first case to reach the High Court after the change in Google’s policy in the UK and Ireland on Ad-words in May 2008. Previously Google had allowed trade mark owners to block third parties from bidding on Ad-words or key words for their registered trade marks. After the policy change third parties were able to bid for key words that are other people’s registered trade marks.
The question as to whether use of a trade mark as a sponsored link actually amounts to trade mark infringement has been uncertain for some time. The English courts have already referred six cases on this issue to the European Court of Justice for ruling. The relevant UK law is based on EU law and national courts must refer issues of EU law to the European Court of Justice for decision.
The judge in Interflora v Marks & Spencer decided that the issues in this case also require ruling by the European Court of Justice. On the same day the judge also considered a trademark infringement case brought by L’Oreal against eBay (L’Oreal and others v eBay and others 22 May 2009) relating to the sale of counterfeit goods and goods produced by L’Oreal, that were not intended for sale in the EU, on eBay’s website. The judge decided that although eBay knew that trademark infringements were likely to occur on its website it was not jointly responsible with the sellers of these goods for such infringement.
eBay had also purchased L’Oreal’s trademarks as sponsored links on search engines to direct internet users to listings on eBay for infringing goods. The judge decided that this issue should also be referred to the European Court of Justice for ruling.
Conclusion
It will therefore be sometime before there is an answer from the courts on the question on use of a competitor’s trade mark as a sponsored link. Until the European Court of Justice makes its ruling, trade mark owners should regularly monitor use of their trade marks to see if competitors are using their trade marks as sponsored links. If trade marks are being used as sponsored links then, in our experience, a solicitor’s letter to the competitor will usually result in the sponsored link being removed. It can also be possible, in certain circumstances, to make a complaint to Google or other search engine operators.
If you are considering purchasing a competitor’s trademarks as a sponsored link then we would advise you to proceed with caution and to ensure that you do not use the registered trademark in the sponsored link (either in the hyperlink or in the text).
If you have any questions arising from this article Alex Weston is a specialist intellectual property and IT law solicitor and can be contacted on 01904 683060 or by email on alex.weston@langleys.com.