The verdict is in for the lengthy European trade-mark battle between British flower competitors Marks and Spencer (M&S) and Interflora regarding Google AdWords and trade-mark infringement. Victory goes to the trade-mark holder, Interflora.
The England and Wales High Court (Chancery Division) decided on May 21st that when retailer M&S used competitor Interflora’s trade-marked company name in M&S’ Google Adword keyword purchase, they infringed the trade-mark.
To briefly explain the digital function at issue, M&S included the keyword “Interflora” in their list of purchased Google Adwords. Thus, when Google search engine users typed in the search term “Interflora”, the results included in the “sponsored links” section an ad for M&S.
The Honourable Mr. Justice Arnold made clear that the use of the trade-marked word alone was not sufficient to justify trade-mark infringement, but this threshold was met as part of a larger internet advertising scheme to confuse customers into thinking that Interflora was part of or somehow related to M&S.
As Justice Arnold wrote,
M & S advertisements which are the subject of Interflora's claim did not enable reasonably well-informed and reasonably attentive internet users, or enabled them only with difficulty, to ascertain whether the service referred to in the advertisements originated from the proprietor of the Trade Marks, or an undertaking economically connected with it, or originated from a third party. On the contrary, as at 6 May 2008, a significant proportion of the consumers who searched for ‘interflora’ and the other Signs, and then clicked on M & S's advertisements displayed in response to those searches, were led to believe, incorrectly, that M & S's flower delivery service was part of the Interflora network. Thus M & S's use of the Signs had an adverse effect on the origin function of the Trade Marks. [Editor's note: bolded highlights are my own]
The High Court ruling means that M&S cannot use “Interflora” in future Google AdWord purchases. It also means that companies – especially in the European Union (EU) – would be wise to avoid purchasing competitors' trade-marked terms if the subsequent sponsored links do not clearly separate the trade-marked search term from the subsequently advertised sponsored link for fear of similar litigious reprisal.
We at IPilogue have been hotly following this specific flower titan legal battle as well as other Google AdWord verdicts around the world.
This amalgamated list of the key decisions in the Google Adwords space in Canada and across the world provides a chronological perspective to the legal community’s coming to terms with this new digital disquiet.
Summary
A consensus seems to be emerging in Canada and elsewhere. Outright use of a competitor’s trade-mark in a Google AdWord purchase is not an infringement. It’s the further attempt to mislead customers by posing as or related to that trade-marked competitor. Put another way, the only arguable safe place to use a trade-mark that you don’t own is in the AdWord purchase itself – use it anywhere further in the advertising process, for example in the sponsored ad listing or the site that the sponsored ad links to, and you’re liable to get into hot water.
Commentary
From my perspective, the most fascinating part of the debate has got to be Google’s play to position itself as the neutral, non-liable service provider. Given the recent decision by the Australia court – and if we think of the Paris court decision as a bit of an outlier – most courts seem favourable to Google’s interpretation of their role.
My ongoing question to the Google public relations team – whether we’re talking AdWords or email data mining or the recent tax avoidance issues – is simple. Just because you’re working within the letter of the law, does that mean it’s the right course for your company?
My humble conclusion is that this isn't the case.
Squeezing out every last AdWord dollar at the expense of ugly legal battle headlines and general disappointment by the members of the business community who value their trade-marks is, in my opinion, not worth it in the long run. A company’s reputation and goodwill are valuable. Google has always been rich in both, so it probably has no idea what it looks like to wear down either. With Google’s current path of profits before public relations, the company may very well find out.