KEYWORDS: "Interflora"

Nuestro investigador Luis Sánchez nos remite esta interesante noticia sobre el uso de keywords. Recordamos también su magnífico trabajo sobre esta materia: "La infracción del Derecho de marca a través del uso del keyword advertising. Aproximación al reciente posicionamiento jurisprudencial comunitario", en Revista de derecho de la competencia y la distribución, nº 11, 2012, págs. 147-176, que fue el texto de su ponencia en el I Congreso Andaluz de Derecho Industrial, celebrado en Granada en octubre de 2011 (Crónica por J. M. Gonzálvez). Interflora v Marks & Spencer High Court of England and Wales (Arnold J) 21 May 2013 Use by M&S of the key word 'Interflora' which resulted in the display of adverts for M&S's flower delivery service infringed Interflora's trade marks. This was because a significant proportion of consumers who searched on Google for 'Interflora' and then saw or clicked on M&S's adverts which were displayed in response, believed incorrectly that M&S's flower delivery service was part of the Interflora network. Key word advertisers should consider carefully whether there could be a significant proportion of reasonably well-informed and reasonably observant internet users who would be unclear on whether there is an economic connection between the advertiser and a trade mark owner. If so, there is a risk of infringement. The burden of proof in a double-identity case is on the advertiser.

Permission to Appeal The judge has granted permission to M&S to appeal to the Court of Appeal on two points (a) the significant proportion test and (b) the reverse burden of proof.

Practical guidelines for key word advertisers In light of the case, key word advertisers may wish to consider the following non-exhaustive initial guidelines: §                    Consider if the owner of the trade mark, whose mark may be selected as a key word: §                               Offers genuine alternative goods or services as an ordinary competitor to the advertiser; §                               Has a network or commercial partnerships of which the advertiser could form a part; §                               Offers goods or services which the advertiser sells, re-sells or offers vouchers for; §                               Is being selected for some other reason e.g. §                                         because a very large number of consumers search for that key word despite the advertiser's goods or services not being similar, or §                                         consumers sometimes confuse the trade mark owner with the advertiser. §                    Consider if a significant proportion of reasonably well-informed and reasonably observant internet users (even if this is a minority) could believe, as a result of the key word advertising, that the advertiser is economically connected to the trade mark owner, including forming part of its network. §                    Consider if there is any objective justification in the interests of fair competition for using the key word where the advertiser does not simply offer genuine alternative goods or services to those of the trade mark owner. §                    Remember that in a double-identity case, the advertiser has the burden of proving that there does not exist a significant proportion of relevant internet users who would think that the advertiser and the brand owners are connected. The advertiser may therefore need to adduce evidence in court accordingly. §                    Bear in mind that many internet users may not appreciate the difference between paid for and natural search results and how keyword advertising works.