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England and Wales High Court (Chancery Division) Decisions
You are here: BAILII >> Databases >> England and Wales High Court (Chancery Division) Decisions >> Interflora Inc & Anor v Marks and Spencer Plc & Anor  EWHC 4168 (Ch) (02 December 2014)
Cite as:  EWHC 4168 (Ch)
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COMMUNITY TRADE MARK COURT
The Rolls Building,
7 Rolls Buildings,
London, EC4A 1NL
B e f o r e :
| INTERFLORA INC
INTERFLORA BRITISH UNIT
|- and -
|MARKS AND SPENCER PLC
FLOWERS DIRECT ONLINE LIMITED
1st Floor, Quality House, 6-9 Quality Court, Chancery Lane, London WC2A 1HP.
Telephone No: 020 7067 2900. Fax No: 020 7831 6864
MISS EMMA HIMSWORTH Q.C. (instructed by Bristows LLP) for the Defendants
Crown Copyright ©
MR. JUSTICE BIRSS:
'96. It was then for the national court to make its assessment, and to do so from the perspective of the reasonably well-informed and reasonably observant internet user:
"53. Having regard to that situation and to the other matters that it may consider relevant, the referring court will, in the absence of any general knowledge such as that referred to at  of this judgment, have to determine whether or not the use of words such as "Marks and Spencer Flowers" in an advertisement such as the one set out at  of this judgment is sufficient to enable a reasonably well-informed and reasonably observant internet user who has entered search terms including the word "interflora" to tell that the flower-delivery service offered does not originate from Interflora."
97. Guidance on the effect on advertising function is set forth in the decision from  to . The Court restated that the use of a sign identical to another person's trade mark in the Google referencing service did not adversely affect the advertising function of that mark, even though it might have repercussions on the use of the mark in advertising. In this connection the Court recognised that the use of such a sign as a keyword meant that the proprietor of the trade mark might have to pay a higher price per click than the competitor if it wished to ensure that its advertisement appeared before that of the competitor. But this did not necessarily mean that the trade mark's advertising function was adversely affected:
"57. However, the mere fact that the use, by a third party, of a sign identical with a trade mark in relation to goods or services identical with those for which that mark is registered obliges the proprietor of that mark to intensify its advertising in order to maintain or enhance its profile with consumers is not a sufficient basis, in every case, for concluding that the trade mark's advertising function is adversely affected. In that regard, although the trade mark is an essential element in the system of undistorted competition which European law seeks to establish (see, in particular, Case C-59/08 Copad SA v Christian Dior Couture SA  E.C.R. I-3421;  FSR 22 at ), its purpose is not, however, to protect its proprietor against practices inherent in competition.
58. Internet advertising on the basis of keywords corresponding to trade marks constitutes such a practice in that its aim, as a general rule, is merely to offer internet users alternatives to the goods or services of the proprietors of those trade marks (see, to that effect, Google France  RPC 19 at ).
59. The selection of a sign identical with another person's trade mark, in a referencing service with the characteristics of "AdWords", does not, moreover, have the effect of denying the proprietor of that trade mark the opportunity of using its mark effectively to inform and win over consumers (see, in that regard, Google France  RPC 19 at  and )."
98. Again this is a significant passage for it shows an appreciation by the Court that internet advertising using keywords which are identical to trade marks is not an inherently objectionable practice. On the contrary, its aim is, in general, to offer to internet users alternatives to the goods or services of trade mark proprietors and it is not the purpose of trade marks to protect their proprietors from fair competition.
99. Similar guidance was given by the Court in relation to the investment function. First, it explained the nature of this function:
"62. When the use by a third party, such as a competitor of the trade mark proprietor, of a sign identical with the trade mark in relation to goods or services identical with those for which the mark is registered substantially interferes with the proprietor's use of its trade mark to acquire or preserve a reputation capable of attracting consumers and retaining their loyalty, the third party's use must be regarded as adversely affecting the trade mark's investment function. The proprietor is, as a consequence, entitled to prevent such use under Article 5(1)(a) of Directive 89/104 or, in the case of a Community trade mark, under Article 9(1)(a) of Regulation 40/94.
63. In a situation in which the trade mark already enjoys such a reputation, the investment function is adversely affected where use by a third party of a sign identical with that mark in relation to identical goods or services affects that reputation and thereby jeopardises its maintenance. As the Court has already held, the proprietor of a trade mark must be able, by virtue of the exclusive right conferred upon it by the mark, to prevent such use (Case C-324/09 L'Oréal SA v eBay International AG  RPC 27 at )."
100. But again, the investment function does not provide a means to protect trade mark proprietors against the effects of fair competition, even if such competition means that these proprietors have to adapt their efforts to acquire or preserve a reputation capable of attracting and retaining customers:
"64. However, it cannot be accepted that the proprietor of a trade mark may—in conditions of fair competition that respect the trade mark's function as an indication of origin—prevent a competitor from using a sign identical with that trade mark in relation to goods or services identical with those for which the mark is registered, if the only consequence of that use is to oblige the proprietor of that trade mark to adapt its efforts to acquire or preserve a reputation capable of attracting consumers and retaining their loyalty. Likewise, the fact that that use may prompt some consumers to switch from goods or services bearing that trade mark cannot be successfully relied on by the proprietor of the mark."'
'174. We have carefully considered the other complaints that Mr Hobbs makes about the judge's approach to the evidence but these were not developed in oral argument and we do not believe they have any independent force or add to the points we have addressed, although, as we reiterate below, we recognise that the judge's approach to the burden of proof has likely influenced his assessment of all of the evidence and consequently affected all of his findings.
177. In assessing these rival submissions, we accept that appellate courts should not interfere with findings of fact made by trial judges unless compelled to do so. This is a matter we have had well in mind throughout. We also accept that, in a case such as this, a trial judge is called upon to make an evaluative or qualitative assessment from which an appeal court should be very cautious in differing. We acknowledge too the guidance given by the Court of Justice in its decision in this case, Interflora (CJEU). Nevertheless, we are far from confident that the judge would have come to the same conclusion had he not made the errors we have identified. We say that for the following reasons.
183. Furthermore, despite all of the foregoing and having considered all of the matters to which the Court of Justice had indicated he should have regard, together with those matters relied upon by Interflora, the judge's overall assessment (at ) was that the majority of consumers who click on M & S's advertisements do so because they have been persuaded to take their custom to M & S and not because they believe that M & S is part of the Interflora network. Nevertheless, as he went on to explain, that did not exclude the possibility that a significant proportion did believe that there was a connection between M & S and Interflora. Then, in his overall conclusion (at ), he held that a significant proportion of the consumers who searched for "interflora" (and like 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. This was therefore a finely judged decision and we are satisfied that it depended in significant part upon those particular findings in relation to which the judge had earlier fallen into error.'
"No such relief [which might affect the exercise of the Convention right to freedom of expression] is to be granted so as to restrain publication before trial unless the court is satisfied that the applicant is likely to establish that publication should not be allowed."
'22. In my view section 12(3) calls for a similar approach. Section 12(3) makes the likelihood of success at the trial an essential element in the court's consideration of whether to make an interim order. But in order to achieve the necessary flexibility the degree of likelihood of success at the trial needed to satisfy section 12(3) must depend on the circumstances. There can be no single, rigid standard governing all applications for interim restraint orders. Rather, on its proper construction the effect of section 12(3) is that the court is not to make an interim restraint order unless satisfied the applicant's prospects of success at the trial are sufficiently favourable to justify such an order being made in the particular circumstances of the case. As to what degree of likelihood makes the prospects of success 'sufficiently favourable', the general approach should be that courts will be exceedingly slow to make interim restraint orders where the applicant has not satisfied the court he will probably ('more likely than not') succeed at the trial. In general, that should be the threshold an applicant must cross before the court embarks on exercising its discretion, duly taking into account the relevant jurisprudence on article 10 and any countervailing Convention rights. But there will be cases where it is necessary for a court to depart from this general approach and a lesser degree of likelihood will suffice as a prerequisite. Circumstances where this may be so include those mentioned above: where the potential adverse consequences of disclosure are particularly grave, or where a short-lived injunction is needed to enable the court to hear and give proper consideration to an application for interim relief pending the trial or any relevant appeal.
23. This interpretation achieves the purpose underlying section 12(3). Despite its apparent circularity, this interpretation emphasises the importance of the applicant's prospects of success as a factor to be taken into account when the court is deciding whether to make an interim restraint order. It provides, as is only sensible, that the weight to be given to this factor will depend on the circumstances. By this means the general approach outlined above does not accord inappropriate weight to the Convention right of freedom of expression as compared with the right to respect for private life or other Convention rights. This approach gives effect to the parliamentary intention that courts should have particular regard to the importance of the right to freedom of expression and at the same time it is sufficiently flexible in its application to give effect to countervailing Convention rights. In other words, this interpretation of section 12(3) is Convention-compliant.'