Retrial ordered in Interflora keyword advertising trade mark dispute with M&S

The Court of Appeal in London made the unusual decision after it accepted some arguments M&S had made about the approach taken by a High Court judge in coming to his judgment in the last stage of the legal proceedings between the companies in May last year.

However, instead of determining the outcome of the case itself, the Court of Appeal elected to order a retrial of the case at the High Court. It is not yet clear when the retrial will take place.

The dispute first arose in 2008 when Interflora sued M&S over alleged infringement of its trade mark rights within keyword advertising displayed in Google's search engine listings.

M&S paid Google to configure its 'AdWords' programme so that advertisements for its flower services would be triggered and displayed to internet users when those individuals searched on Google for words such as 'Interflora' and 'Interflora flowers'. Google's AdWords system allows companies to buy the right for their ads to appear beside the natural results when certain terms are searched for.

Interflora has claimed that M&S’s use of its brand in keyword advertising activity infringes its trade mark rights.

The case has a long and complex history. Legal questions concerning trade mark law and how it applies in the context of keyword advertising online were referred to the Court of Justice of the EU (CJEU) before the trial even took place following the decision by Interflora to lodge its case before the High Court.

Also before trial, the case went to the Court of Appeal twice on the question of the use of surveys in trade mark disputes. The law and practice in this area was substantially altered. 

The CJEU determined that companies can make use of rivals' trade marks in keyword advertising under certain circumstances. Such use would be legitimate providing that the function of the trade mark is not undermined by the advert by confusing internet users into thinking that the goods are being sold by the trade mark owner rather than the advertiser, the CJEU said.

In May last year, Mr Justice Arnold at the High Court ruled that M&S had infringed the trade marks of Interflora when it bought keyword terms from Google that referenced the flower company and advertised its own flower service on the back of them.

Mr Justice Arnold said that M&S had failed to make it clear enough that the services it was promoting did not belong to Interflora. He said a "reasonably well-informed and reasonably observant internet user" would have been confused as to which company was behind the ads.

M&S had appealed against the judgment and it is in hearing the appeal that the Court of Appeal decided to order a retrial of the case.