Interflora v M&S – guidance needed on trade mark law regarding keywords
Wednesday May 27th 2009, by Piers Strickland
Summary: The English High Court will ask the European Court of Justice (“ECJ”) for trade mark law guidance on the subject of Internet search keywords in the case of Interflora v M&S
Latest case does nothing to clear up legal confusion. Whole of Europe now awaits the ECJ’s guidance.
The Interflora v M&S case is the latest decision handed down in the contentious area of companies purchasing competitors trade marks as keywords from Internet search engines. Here, Interflora alleged (and M&S admitted) that M&S purchased a whole array of “INTERFLORA” keywords from Google, including common misspellings. Interestingly, however, Google was not a defendant to these proceedings.
M&S, amongst other things, argued that the relevant law (Article 5(1)(a) or (2) of the Trade Marks Directive and Article 9(1)(a) or (c) of the CTM Regulation) was far from being acte clair, as had been evidenced by the fact that a number of national courts of EU member states had already found it necessary to refer questions to the ECJ.
The Judge (the Honourable Mr Justice Arnold) went on to list various national courts around Europe that had already requested preliminary rulings from the European Court of Justice on a number of the issues arising out of Google Adwords in particular:
1. Case C-236/08 Google France v Louis Vuitton Malletier is a reference from the Cour de Cassation in France lodged on 3 June 2008. The hearing took place before the Grand Chamber of the ECJ on 17 March 2009 together with the next two references. The Advocate General’s Opinion in all three references is expected to be delivered on 4 June 2009.
2. Case C-237/08 Google France v Viaticum, Luteciel is another reference from the Cour de Cassation lodged on 3 June 2008.
3. Case C-238/08 Google France v CNRRH is the third reference from the Cour de Cassation lodged on 3 June 2008.
4. Case C-278/08 Die BergSpechte Outdoor Reisen und Alpinschule Edi Koblmüller GmbH v Günter Guni and trekking.at Reisen GmbH is a reference from the Oberster Gerichtshof in Austria lodged on 26 June 2008. The hearing of this reference took place on 7 May 2009.
5. Case C-558/08 Portakabin Ltd v Primakabin BV is a reference from the Hoge Raad der Nederlanden lodged on 17 December 2008.
6. Case C-91/09 Eis.de GmbH v BBY Vertreibsgesellschaft mbH is a reference by the Bundesgerichtshof in Germany made by order dated 22 January 2009 and lodged on 6 March 2009.
M&S sought to have the whole case stayed pending the above references being handed down. For various reasons, the Judge felt that this did not offer sufficient certainty that the ECJ would answer all of the questions raised by this case. For example, there was the possibility that some references to the ECJ might be withdrawn. Accordingly, the Honourable Mr Justice Arnold ruled that the parties should submit further questions for him to approve before formally referring them to the ECJ.
The parties were expressly referred to and asked to consider the Honourable Mr Justice Arnold’s other decision of the same date: L’Oréal v eBay, before finally committing themselves to an ECJ reference.
The Judge refused Interflora’s request that M&S be injuncted from using INTERFLORA keywords until the full trial of this issue, ruling that Interflora had not moved quickly enough or consistently enough in this respect, to justify what was in effect a late interim injunction application.
Now, Interflora will no doubt have to endure the painful process of hoping that the ECJ answers the relevant questions quickly and effectively.
