Interflora case study: how new keyword advertising legislation could harm businesses

Trade mark specialist Rob White discusses significant changes in the keyword field in 2013 that businesses should know about.

Does your business use search engine tactics to get to the top of the pile in a search and out-do your competitors? Do you pay for ‘keywords’ to appear in the advertising sections of Google? If so, some important developments in this field are imminent in 2013. There will be a key legal decision from the UK High Court that will affect the way you will be able to do your search engine business online.

The case involves an action brought by the famous flower retailer Interflora and the household high street shop, M&S. The problems began in 2008 when M&S purchased some ‘Interflora’ keywords so that their own M&S flower delivery service appeared in a sponsored advert when a user was searching for ‘Interflora.’ The text of the advert did not mention ‘Interflora’ and when clicking the link, one arrived at a flower website clearly branded with M&S.

Keyword confusion?

Interflora argued that the advert would mislead consumers into thinking the M&S flowers were approved by Interflora or connected and that it would damage their reputation and infringe their INTERFLORA trade mark. M&S argued that no user would be confused as the advert made no reference to ‘Interflora’ and the link took you to a clearly branded M&S website. This, they claim, is merely competition and the offering of an alternative florist service.

There have been other EU based ‘keyword’ cases in recent times which have decided that if the text of the sponsored advert does not contain a company’s trade mark and if, on clicking the link, one arrives at a website that is clearly a different business from the trade mark owners, the consumer would not be confused. Hence, the trade mark in question would not be infringed.

Could your keyword infringe someone else’s trade mark?

In the Interflora case, the Court of Justice of the EU has already reviewed this matter, essentially saying that the owner of a trade mark with a reputation, like Interflora, can stop a competitor from using a keyword containing its trade mark if, for example, it weakens that trade mark to become a common name instead of a brand. Also, if a user cannot tell, without difficulty, whether the website from the sponsored advert is connected to or approved by the trade mark owner, then that trade mark may be infringed. However the EU court said a trade mark proprietor cannot stop a competitor using a keyword if that competitor is merely offering an alternative to the trade mark owner’s goods or services without affecting the trade mark in any negative way.

Now, in 2013, the UK High Court must decide if there are any special rules for trade marks with a big reputation that would mean M&S has infringed the Interflora trade mark by purchasing the ‘interflora’ keyword.

Keywords: Practical tips to avoid trade mark pitfalls

All online retailers need to keep an eye on this decision as to any changes that may need to be made to search engine and advertising practices. For the time being, if you purchase a competitor’s brand as a keyword for search engines, the practical advice to avoid any nasty trade mark surprises is:

  • Avoid using in any way the competitor’s trade mark in the text of the advert or the URL link
  • Use your own brand in the text to make it even clearer you are offering an alternative
  • On clicking the advert, ensure the website clearly relates to your own business and makes no reference to the competitor’s brand or uses any of its logos or brands.

Of course, this cuts both ways and doesn’t just apply to your own practices: If your competitor purchases a keyword of your own brand but their advert adheres to the above guidance, it is highly unlikely to infringe your trade mark or reputation.

Nevertheless, a careful case-by-case analysis is recommended and also taking into account other regulations that may affect the use of marks or adwords of competitors such as unfair commercial practices, misleading and/or comparative advertisement.

The outcome of this decision could affect what you can say through keyword advertising and for now at least, it may be safer not to say it with flowers!

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