Interflora sues Marks & Spencer over Google ad links

[directmarketingadvice]

In Google France the ECJ indicated that the sale of the adwords wasn't illegal as Google wasn't using a trademark in 'its own commercial communications' whereas the purchasers of the adwords had (and might therefore be liable for trademark infringement).

Which "commercial communication" by M&S contains the word "interflora"?

None of them, right?

Unless you're defining someone typing a word into a password protected interface - which can't be seen by the public - as a "commercial communication".

This is one of the biggest problems with the case you're trying to make: it all hinges on re-defining words to mean things they were never meant to mean in the first place.

My case, on the other hand, is simple and straightforward and treats all types of website and all forms of publishing equally. It goes like this:

"Publishers have the right to sell advertisments. Advertisers have the right to buy that ad space and run ads as long as the content of those ads is legal."

Steve

 

[directmarketingadvice]

question to Steve:
Do google include trademark words in the "add all from this category" feature if the trademark is not mentioned anywhere on the landing page?

I don't know. I rarely use that function and, on the occasions I have, I don't remember seeing trademarked words in the list.

I think what would be interesting would be if Google broadmatched flower delivery to Interflora (because it would be a related term) - i.e. showed flower delivery ads on the Interflora SERP.

If that happened, the ads would show, but people like David couldn't argue that someone typing the word "interflora" into the adwords, because it didn't happen.

Would that, therefore, make the ads legitimate?

It's questions like this that, IMO, show how weak the Interflora case is - as it's based on technicalities that don't even have to exist in order for the ads to show.

Steve

 

[UKSBD]

Unless you're defining someone typing a word into a password protected interface - which can't be seen by the public - as a "commercial communication".

Steve

In my opinion that is where the whole case stands
by typing the word in you are sending information to google
would that be classed as a "commercial communication"?

Just to add:
We don't even know if someone at M & S even entered "Interflora" as a keyword
could there be any other reason for the ad to appear?

 

[David Warrilow]

Which "commercial communication" by M&S contains the word "interflora"?

None of them, right?

Steve

Wrong.

And this is the point - in Google France the ECJ held that people purchasing adwords had used the trademark in their 'commercial communications' whereas Google had not. This was confirmed by the Bergspechte case.

Thus M&S has used 'Interflora' in their commercial communications even if the word doesn't appear in the advert as displayed.

 

[directmarketingadvice]

In my opinion that is where the whole case stands
by typing the word in you are sending information to google
would that be classed as a "commercial communication"?

That does seem to be one of the key points. If the answer is "no", then I don't know what basis the case could possibly have.

To use an analogy, say Microsoft found out Ch4 was showing a 60 minute documentary about Steve Jobs, would it be illegal for them to book ad spots during that show?

If not, then what's the difference between that and the Interflora/M&S case?

Does it really just hinge on a word being typed into an interface - a word that no-one outside of M&S's PPC management team and Google's Adwords team could ever see?

Just to add:
We don't even know if someone at M & S even entered "Interflora" as a keyword could there be any other reason for the ad to appear?

It could be a broad match for something like flower delivery, but I suspect that's not the case. If it were, I'd expect to see more ads showing.

Steve

 

[David Warrilow]

Wrong.

And this is the point - in Google France the ECJ held that people purchasing adwords had used the trademark in their 'commercial communications' whereas Google had not. This was confirmed by the Bergspechte case.

Thus M&S has used 'Interflora' in their commercial communications even if the word doesn't appear in the advert as displayed.

I should clarify that the ECJ held that people purchasing adwords had used the trademark in their 'commercial communications' even if the word doesn't appear in the advert as displayed.

 

[directmarketingadvice]

Wrong.

And this is the point - in Google France the ECJ held that people purchasing adwords had used the trademark in their 'commercial communications' whereas Google had not. This was confirmed by the Bergspechte case.

You mean this case:

"Article 5(1) ... must be interpreted as meaning that the proprietor of a trade mark is entitled to prohibit an advertiser from advertising, on the basis of a keyword identical with or similar to that trade mark which that advertiser has, without the consent of that proprietor, selected in connection with an internet referencing service, goods or services identical with those for which that mark is registered, in the case where that advertising does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark or by an undertaking which is economically connected to it or, on the contrary, originate from a third party".

http://ipkitten.blogspot.com/2010/03/keywords-again-but-this-time-googles.html

Hardly the definitive conclusion you seem to be suggesting.

So, as I've previously suggested, it seems to come down to whether people can be expected to know M&S aren't Interflora.

I still don't understand why, after all these rulings, you expect Interflora to win this.

Steve

 

[David Warrilow]

In relation to Article 5(1) this is correct, but as previously discussed Interflora are also bringing an action under the UK provisions corresponding to Article 5(2) (i.e. section 10(3)). The criteria you mention in relation to Art.5(1) has (as far as I am aware) not been held to apply to Article 5(2), and I don't see why it ever would be as Art 5(2) deals with a separate type of infringement.

Section 10(3) reads:

(3)A person infringes a registered trade mark if he uses in the course of trade a sign which—

(a)is identical with or similar to the trade mark, and

(b)is used in relation to goods or services which are not similar to those for which the trade mark is registered,

where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

We know that the use of the keyword is use in the course of trade (as set out by the ECJ in google France and Bergspechte). We believe that the mark used is identical. We believe that Interflora has a reputation in the UK.

So does the use take unfair advantage of the repute of the mark?

You admitted above that M&S's use of the Interflora trademark maybe takes unfair advantage of the mark.

Also does the use have a detrimental effect on the distinctive character? Possibly, as it could be held to dilute the distinctive character.

So, as I've previously said, I think Interflora have a good chance of winning.

 

[cjd]

So, as I've previously said, I think Interflora have a good chance of winning.

That's the majority lawyerly view at the moment. And as far as I'm concerned it's the ethically correct position too - there's no way I should be allowed to actively use a competitor's brand to advertise my own service.

 

In relation to Article 5(1) this is correct, but as previously discussed Interflora are also bringing an action under the UK provisions corresponding to Article 5(2) (i.e. section 10(3)). The criteria you mention in relation to Art.5(1) has (as far as I am aware) not been held to apply to Article 5(2), and I don't see why it ever would be as Art 5(2) deals with a separate type of infringement.

Section 10(3) reads:

(3)A person infringes a registered trade mark if he uses in the course of trade a sign which—

(a)is identical with or similar to the trade mark, and

(b)is used in relation to goods or services which are not similar to those for which the trade mark is registered,

where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

Not applicable as M&S are possible using a word ,which in this case is made of 2 seperate words that may well be identified as such by search engines.

Earl

 

[directmarketingadvice]

We know that the use of the keyword is use in the course of trade (as set out by the ECJ in google France and Bergspechte). We believe that the mark used is identical. We believe that Interflora has a reputation in the UK.

OK, let's agree on those things.

So does the use take unfair advantage of the repute of the mark?

You admitted above that M&S's use of the Interflora trademark maybe takes unfair advantage of the mark.

Which post # was that? I don't recall saying anything about it being unfair.

Also does the use have a detrimental effect on the distinctive character? Possibly, as it could be held to dilute the distinctive character.

I definitely don't agree with that. And, if you read the parts I bolded of the ECJ ruling, that seems to hinge on people being able to ascertain that M&S aren't Interflora.

(Unless you read the ECJ statement as saying "if they can't, it's not allowed... if they can... well, that's a debate for another day." - which, I suppose, could be what they're saying. They certainly seemed to pass the buck on a few other issues, such as whether organic listings fall under this issue.)

So, as I've previously said, I think Interflora have a good chance of winning.

I still don't see it.

Steve

 

[David Warrilow]

Apologies, I posted an old copy of Section 10(3) that only refers to dissimilar goods. this was amended in 2004 after the Davidoff case to refer to any goods/services similar or dissimilar:

(3) A person infringes a registered trade mark if he uses in the course of trade in relation to goods or services a sign which is identical with or similar to the trade mark, where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

 

[David Warrilow]

Which post # was that? I don't recall saying anything about it being unfair.

Steve

At post #63 you said:

Are they taking "unfair advantage"? Maybe.

 

[UKSBD]

So, as I've previously suggested, it seems to come down to whether people can be expected to know M&S aren't Interflora.

Steve

I would disagree with that, because M & S is a store that sells numerous brands.

I know M & S are not Interflora, but if I see M & S advertising Iterflora there is no reason for me to think they don't sell Interflora.

For all I know M & S might have independant stores within them
(like Debenhams do)

I can honestly say that had I seen that add without knowing about what was happening I would have just assumed M & S were selling Interflora products.

If me, as someone who is internet savvy would have thought that, I dare say a lot of other people would have thought so too.

It's no different to someone like John Lewis bidding on Ralph Lauren, I know they are 2 seperate companies, but would assume if John Lewis advertise Ralph Lauren that they sell Ralph Lauren products.

 

[David Warrilow]

And as far as I'm concerned it's the ethically correct position too - there's no way I should be allowed to actively use a competitor's brand to advertise my own service.

I agree with the above.

 

[directmarketingadvice]

At post #63 you said:

Are they taking "unfair advantage"? Maybe.

I wrote:

Are they taking "unfair advantage"? Maybe.

But here's an analogy that should answer that:

And then gave an analogy for why I didn't think that was the case.

David, you're misrepresenting me again. Please don't do it. As I said before, it's unbecoming. It makes you look like you're clutching at straws.

Steve

 

[directmarketingadvice]

I can honestly say that had I seen that add without knowing about what was happening I would have just assumed M & S were selling Interflora products.

Even if the ad said:

M&S Fresh Flower Delivery
Stunning fresh flowers at M&S now.
Order by 6 pm for Next Day Delivery
marksandspencer.com

(Which is an ad they ran for the keyword "flower delivery".)

Steve

 

[David Warrilow]

Apologies Steve, I had no intention of misrepresenting what you said, I thought you had agreed that M&S might have taken unfair advantage of the Interflora trademark.

I think they might have, but it's up to the court to decide.

David

 

[directmarketingadvice]

That's the majority lawyerly view at the moment. And as far as I'm concerned it's the ethically correct position too - there's no way I should be allowed to actively use a competitor's brand to advertise my own service.

My view is different: I don't think I have the right to stop a website owner from running ads on his web pages.

(Providing the content of his ad is legal.)

As I said before, why stop at search engines? Why not also apply this to website directories that list companies with trademarked names?

And why stop there?

Steve

 

[cjd]

And why stop there?
Steve

Why indeed.

I don't believe that a Directory service should list my trademark without my consent either. I probably wouldn't object if I received a benefit from it - but otherwise I would, as the directory owner is simply attempting to benefit from the use of the goodwill I've built (expensively) with my brand. And that is not lawful.

 

[directmarketingadvice]

Why indeed.

I don't believe that a Directory service should list my trademark without my consent either. I probably wouldn't object if I received a benefit from it - but otherwise I would, as the directory owner is simply attempting to benefit from the use of the goodwill I've built (expensively) with my brand. And that is not lawful.

Fair enough, at least your position is consistent and I respect that.

My objection on this issue is with those that are dressing up their desire to monopolise particular search results as a "trademark issue" that, somehow, doesn't go any further than the search engines.

Steve

 

[David Warrilow]

My objection on this issue is with those that are dressing up their desire to monopolise particular search results as a "trademark issue" that, somehow, doesn't go any further than the search engines.

Steve

I think this does go further than the search engines, as if you searched for Interflora then M&S is very unlikely to come up in an organic search.

 

[directmarketingadvice]

I think this does go further than the search engines, as if you searched for Interflora then M&S is very unlikely to come up in an organic search.

But 9 other websites do.

Which, again, says a lot.

If the search results page was "about Interflora" then, as no site is more "about" Interflora than Iterflora's own site, why aren't google returning 10 pages from that site?

Given that Google know more about search engine behaviour than any other company in the world (because they have the most data), what are they seeing? I suspect they're seeing that some people are clicking on the other 9 sites on the page.

And that throws a big spanner in the works given Interflora seem to be arguing that people searching on Interflora are only interested in "Interflora and their associates".

Steve

 

I think this does go further than the search engines, as if you searched for Interflora then M&S is very unlikely to come up in an organic search.

I suspect that is more to do with M&S apparently not using any SEO on there site.

I can only think they expect to be found on the search engines either through the Brand or PPC.

Missing out big time IMHO.

Earl

 

[David Warrilow]

I wouldn't expect Google to return a result in its organic search that didn't contain a reference to 'Interflora', but I'm not an SEO expert.

Is it possible that a page brought up by the organic Google search doesn't contain a reference to the word searched for?

David

 

I wouldn't expect Google to return a result in its organic search that didn't contain a reference to 'Interflora', but I'm not an SEO expert.

Is it possible that a page brought up by the organic Google search doesn't contain a reference to the word searched for?

David

There are ways to rank a page for say "interflora" without using the word "interflora"

If thats what you mean.?

Earl

 

[David Warrilow]

There are ways to rank a page for say "interflora" without using the word "interflora"

If thats what you mean.?

Earl

That is what I mean.

How can they do it without using PPC, metatags, or other html code that involve the word Interflora?

David

 

That is what I mean.

How can they do it without using PPC, metatags, or other html code that involve the word Interflora?

David

interflora is 2 words.

Thats your lot without crossing me palm.

Earl

 

[David Warrilow]

interflora is 2 words.

Thats your lot without crossing me palm.

Earl

If you're suggesting using the two components 'inter' and 'flora' next to each other then this is probably liable to be held an infringement as the introduction of a space has been held to be a de minimis alteration.

If they are used at a distance from each other then this might well not be an infringement.

I'll make my own conclusions. You're not getting a penny.

 

[directmarketingadvice]

Is it possible that a page brought up by the organic Google search doesn't contain a reference to the word searched for?

Yes. There's an SEO guru who proved this by getting rankings for a page that had no text whatsoever.

(Not even in the meta tags.)

Steve

 

[David Warrilow]

Yes. There's an SEO guru who proved this by getting rankings for a page that had no text whatsoever.

(Not even in the meta tags.)

Steve

Very interesting.

Can you send me a link to any details of this?

Would be much appreciated. It raises new and exciting infringement questions.

David

 

[directmarketingadvice]

Very interesting.

Can you send me a link to any details of this?

I don't know if there is a link. I saw it ona video and I don't know if that video is publicly available.

But any competent SEO would know how to do it.

Steve

 

[cmcp]

On various Anonymous forums on the internet groups of folk do this for a laugh.

A couple of weeks ago they did it to the vatican, with a paedo ring site coming up when you searched for Holy See.

There's been loads of political and anti-corporation examples, I think the papers like to call it "Google Bombing".

 

If interflora win this one the flood gates will open and the legal profession will as usual be the winners.



Earl

 

[directmarketingadvice]

If interflora win this one the flood gates will open and the legal profession will as usual be the winners.

And website owners - and internet users - would be the losers.

Hopefully the ruling will continue to be "no to libel, passing off and trying to confuse people into thinking you're a company you're not" and "yes to publishers being able to run ads on their pages and yes to the freedom to advertise to people who are interested in the sort of product/service you sell".

Steve

 

[Colin Parker]

Because I advertise on brand/compeitor keywords I want M&S to win but ...

What would you say if you rang Yellow Pages and asked for Interflora's number and they gave you Interflora's + M&S + nine others - 11 being the numbers of ads that can appear for any keyword. Wouldn't you be brassed off that you were not given exactly what you asked for?

What would you say if YP gave your competitors numbers in addition to yours? Would you just shrug your shoulders and say ... thats business?

I just can't decide on where I stand on the issue raised by Interflora.

And I don't think the legal issue is straightforward - a Judge may decide web advertising raises a justifies different legal argument.

The final judsgement will be VERY interesting.

Colin Parker

 

[David Warrilow]

And website owners - and internet users - would be the losers.

Hopefully the ruling will continue to be "no to libel, passing off and trying to confuse people into thinking you're a company you're not" and "yes to publishers being able to run ads on their pages and yes to the freedom to advertise to people who are interested in the sort of product/service you sell".

Steve

I disagree (maybe unsurprisingly). I hope it is found to be a s.10(3) infringement and possibly a section 10(1) infringement.

People have the freedom to advertise to people who are interested in their services. They can use descriptive terms such as (in this instance) 'flower delivery' or 'buy flowers'. I don't think that people should be allowed to advertize their products/services using competitors' registered trademarks.

The point of spending money on registering a trademark is that it provides the owner with the exclusive right to use it in the course of trade in relation to relevant goods/services. The registration of a trademark is supposed to protect the time and money people spend establishing goodwill in the name of their business/product.

Therefore, a finding of non-infringement would in my opinion contradict one of the purposes of trademark registration.

 

..

What would you say if you rang Yellow Pages and asked for Interflora's number and they gave you Interflora's + M&S + nine others - 11 being the numbers of ads that can appear for any keyword. Wouldn't you be brassed off that you were not given exactly what you asked for?

On the other hand if you placed an add in the yellow pages ,you would be likely to be surrounded by other companies doing the same thing.

Earl

 

[directmarketingadvice]

What would you say if you rang Yellow Pages and asked for Interflora's number and they gave you Interflora's + M&S + nine others - 11 being the numbers of ads that can appear for any keyword. Wouldn't you be brassed off that you were not given exactly what you asked for?

What would happen if you looked up Interflora's number in the Yellow pages and, when you found their ad, it was surrounded by ads by other companies?

Oh, wait, that's always been the way it's been... and that's because YP is a publisher and allowed to sell advertising.

TBH, I really don't see the difference between google giving 9 organic listings from other websites on the Interflora SERP and them giving those 9 organic listings plus some ads.

Surely, if there's any sign of SEO work (which there probably will be), the 9 organic listings can be sued just as easily?

Steve

 

[David Warrilow]

On the other hand if you placed an add in the yellow pages ,you would be likely to be surrounded by other companies doing the same thing.

Earl

True, but none of the other advertisers have paid to be intentionally associated with your business name.