In the long running trade mark dispute between Interflora and Marks & Spencer over whether the use of a competitor's trade mark on the Google AdWords service constituted trade mark infringement, the Court of Appeal has overturned the original High Court decision and in a rare move, has ordered a retrial of the case in the High Court.
High Court decision
The dispute between Interflora and M&S originally began back in 2008 and in the High Court decision of 2013 (please see our earlier update here), Arnold J held that M&S had infringed Interflora's trade marks as the average consumer would not necessarily be aware that M&S were not in the Interflora network and M&S’ advertisements on the Google AdWords service did not enable internet users to determine whether the flower delivery service originated from Interflora or not. M&S appealed this decision.
Errors in High Court decision
In its review of the High Court decision, the Court of Appeal held that the trial judge, Arnold J, had made a number of errors in his assessment of the case including applying an apparent reversal of the burden of proof and referring to the doctrine of initial interest confusion which was labelled "unnecessary" and "potentially misleading". The Court of Appeal also held that Arnold J made a several procedural errors and incorrectly interpreted some of the evidence before him. Although the Court of Appeal is reluctant to interfere with assessments made by trial judges, as a result of these errors, the Court of Appeal said it could not be confident that Arnold J would have come to the same conclusion of infringement had the errors not been made. It considered the possibility of assessing the question of infringement itself for the benefit of time and cost but as it had not reviewed all of the necessary documents or heard the oral evidence of the witnesses given in the High Court, it did not feel able to do so.
The case will now return to the High Court for the question of infringement to be re-assessed but the decision further emphasises that such key word advertising is not "inherently or inevitably objectionable from a trade mark perspective".
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