Interflora vs. Marks & Spencer: no to the use of the trademark of others as a keyword

On 21.05.2013 the British Court recognized the reasons of Interflora against Marks & Spencer in the court action relative to the use of the trademark as a keyword in Google’s AdWords service. The European Court of Justice had already expressed itself in 2011 in the present case, establishing that the use of a trademark as a keyword in a search engine can constitute a trademark counterfeit action under certain conditions. In particular, the Court had asserted that there exists a violation of the «function of indication of origin of the trademark when the advertising that appears in connection with said keyword does not allow or allows only rarely the Internet user normally informed and reasonably attentive to know if the goods or the services mentioned in the ad come from the owner of the trademark or from a company economically related to the trademark or, on the contrary, from a third party». Therefore, if that precise keyword recalls a site that offers similar services, the consumer could be prevaricated. Also if the Internet users are always more expert and capable of recognizing a sponsored link from the normal result of a search, according to the Court it was rather difficult that an average consumer could understand that it was Marks & Spencer that sent flowers through Interflora or, as it actually is, through its own distribution chain. On the other hand, the Court had also asserted at that time another important principle, which is that «the owner of a trademark that is notorious cannot ban, in particular, advertising that is made to appear by its competitors from keywords that correspond to said trademark and that propose, without offering a simple imitation of the goods and of the services of the owner of such a trademark, without provoking a dilution or a corrosion and without causing damage to the functions of said trademark that is notorious, an alternative with respect to the goods or the services of the owner of said trademark.» For this reason, some commentators have been surprised by the fact that Marks & Spencer has not defended itself by stating that the use of the keyword constituted comparative advertising pursuant to art. 4 of the Directive 2006/114/EC and had been considered licit in previous cases.