Google Adwords: Court of Appeal remits Interflora keywords advertising trade mark case for retrial

The Court of Appeal has allowed an appeal from a decision of the High Court in the trade mark infringement case involving internet keywords advertising between Interflora and Marks & Spencer (M&S) and, in a rare move in an IP context, remitted the case to the High Court for retrial. The court ruled that the trial judge Arnold J had wrongly adopted both a reversed burden of proof test that he had created in a previous case and the US doctrine of initial interest confusion. He had also made several errors of procedure and in interpreting the evidence.

The decision is likely to concern brand owners, particularly towards the luxury end of the market. However, online retailers and arguably consumers are likely to view it more favourably. Given the result and tone of the judgment, overall the advantage in the proceedings must now lie with the defendants, M&S.

The decision involves a robust defence of the trade marks jurisprudence of the ECJ. Kitchen LJ was keen to emphasise that the ECJ had formulated its tests for infringement with great care. The Court of Appeal appears to be sending out a signal that the UK benefits from its membership of a harmonised and unitary trade mark system within a single market of undistorted competition that is challenged by a constantly developing technological environment. (Interflora Inc and another v Marks and Spencer plc [2014] EWCA Civ 1403, 5 November 2014.)