One of the main problems with keyword advertising is that keywords are often identical or similar to registered trade marks and, if you don’t get it right, you can be dragged into costly trade mark infringement proceedings.
The M&S case
Some guidance on how to avoid this was given in last year’s High Court ruling that M&S (Marks and Spencer) had infringed Interflora’s trade marks in its keyword advertising campaign. However, in a rare move, the Court of Appeal has ordered a re-trial of the dispute and in doing so has altered the way internet advertisers and brand owners should think about online campaigns.
The M&S advert looked like this:
M&S Flowers Online
Beautiful Fresh Flowers & Plants
Order by 5.00 p.m. for Next Day Delivery.
The High Court had held that M&S was liable for infringement because it felt that its adverts (having the above general format) did not enable the reasonably well-informed and observant internet user to tell that M&S’s flower delivery service was not part of the Interflora network. The judge said that M&S had to prove that its adverts were sufficiently clear so that there was no real risk of confusion on the part of the average internet user. He felt that M&S had failed to discharge that burden.
The judge relied on the doctrine of ‘initial interest confusion’. This is where the consumer is not under any confusion regarding the origin of the advertised goods/services at the point of sale, but has initially been attracted or diverted, so that there is a real risk that the consumer will go on to purchase the third party goods even though they know that they are not the brand owner’s goods.
However, the Court of Appeal was ‘far from confident’ that the judge would have come to the same conclusion had he correctly analysed the legal test for infringement and correctly assessed the evidence. The judge’s (incorrect) approach to the burden of proof had likely influenced his assessment of all of the evidence – and so affected all of his findings.
The Court of Appeal concluded that it was not in a position to determine the question of infringement itself because it had not heard the witnesses or seen the evidence placed before the High Court. So it had no alternative but to order a re-trial (to be heard by a different judge).
Internet advertisers and brand owners can take the following useful points from this decision:
1. The correct test for infringement in keyword advertising cases is that established by the Google France case. The test is whether the advert does not enable normally informed and reasonably observant internet users to establish whether the goods or services referred to in the advert originate from the trade mark owner or from an unconnected third party.
2. The burden is on the brand owner to prove that the third party advert does not satisfy that test.
3. ‘Initial interest confusion’ does not play any role in the test for infringement. An advertiser does not have any duty to avoid confusion as such, although obviously it still needs to take care to ensure that its adverts do enable average internet users to establish whether the goods or services originate from the trade mark or an unconnected third party (as otherwise it may be held liable for infringement).
4. Failure on the part of the advertiser to ‘negatively match’ against another’s trade mark (when bidding on a generic keyword, such as ‘florist’) might constitute use of that trade mark for the purposes of trade mark law, but this will depend on all the circumstances (including the length of time involved and whether the advertiser’s bidding had been done with the intention and effect of using the rival brand to trigger the display of its own advert). Even if it does, however, this will still not lead to a finding of infringement unless it can be shown that the advert does not satisfy the Google France test.