Earlier this week, following the return of the keenly-fought litigation in Interflora v Marks & Spencer from the Court of Justice of the European Union to the Chancery Division of the High Court, England and Wales, Mr Justice Arnold held Marks & Spencer liable for trade mark infringement in a 325 paragraph judgment that you can read in full here.

Ian Wood,a partner in London-based solicitors and MARQUES members Charles Russell LLP explains the ruling thus: 

"In essence the judgment says that M&S infringed Interflora's registered trade marks for Interflora - because M&S used the Interflora trade mark as a keyword on a Google search to bring up ads for M&S flower delivery service. The ads did not enable internet users to ascertain whether or not the goods in the ads came from the owners of the Interflora trade marks - and indeed in many cases when they clicked on the ads they thought the M&S flower delivery service was part of the Interflora network.

Unlike other search engines, such as Microsoft's Bing and Yahoo!, Google do not operate a trade mark complaints procedure in the UK by which trade mark owners can apply to block their trade marks being chosen as keywords. In the absence of such a complaints procedure, trade mark owners may well wish to notify Google of offending ads - and consider including Google in any formal legal proceedings if they continue to allow trade marks to be used as keywords in such circumstances. All in all, a helpful judgment for those wishing to protect their trade marks."

 Vanessa Barnett, a technology and media partner at Charles Russell LLP says: 

"Marketing departments will now be scratching their heads and wondering if their keyword purchasing strategies are dead in the water.  In my view, there is the odd lifeline depending on the nature of the (perceived) connection between the brand which is the trade mark used in the keyword purchase and the purchasing brand.  For example, if Coca Cola were to purchase Pepsi keywords, it would be a much harder argument to run that those searching thought they were somehow connected (tens of years of very effective global advertising tells us they are not!)  And there are many other well known brands which are obviously opposed to each other and this is well known. 

In addition, marketeers can also now consider what they can place in the text of their ads triggered by the keyword which makes it very obvious that no connection.  I wonder if things would have gone differently if M&S had shouted out "An independent flower delivery network" in the ads?  In my view, these are two important threads which still need exploring."