To remind ourselves of the background to the Interflora case, a Google search brings up two sets of results. On the left-hand side are the search results, which are those websites which Google has determined are the most relevant to your search term. In yellow boxes on either the right hand side or the top of the page are “sponsored links”, namely adverts.

The adverts appear because the advertiser is paying Google to bring up its advert when the search term is used – they have registered that term as a keyword or “AdWord” in Google parlance. Any number of advertisers can register the same AdWord and the advertiser that pays the most per AdWord will have its advert listed first.

In Interflora, Marks & Spencer (M&S) paid Google for “Interflora” as an AdWord to promote its own flower delivery service. Therefore, when Google users searched for “Interflora”, this resulted in a sponsored link to M&S Flowers Online appearing prominently in the sponsored links section of the search results. M&S’s use of the word “Interflora” was invisible as it did not appear in the text of the M&S advert. Interflora objected to M&S’s use of its trade mark, “Interflora”, and issued English proceedings against M&S for trade mark infringement. The case was referred to the CJEU.

The CJEU had already held, in the case of Google France, that an advertiser’s use of a competitor’s trade mark, as a keyword to advertise identical or similar services to those for which the trade mark is registered, can infringe a trade mark if the advert did not enable the average internet user (or enabled him only with difficulty) to ascertain whether or not the goods or services offered in the advert originated from the trade mark owner. This could happen even if the trade mark did not appear in the advert itself.

However, the legislation provides that a trade mark which has a reputation can also be infringed if the use of it is detrimental to a trade mark’s distinctive character or reputation, or if the use takes unfair advantage of the trade mark’s reputation. In Interflora, the CJEU was asked to clarify the circumstances when infringement could occur, in the context of keywords, under these heads.

The CJEU held that use of someone else’s trade mark as an AdWord could infringe in the following scenarios:

Detriment to distinctive character:

• This occurs where the use of the trade mark as a keyword is likely to contribute to the trade mark becoming a generic term (i.e. losing its ability to function as a badge of origin of the trade mark proprietor).
• However, the CJEU stated that mere use as a keyword by competitors does not necessarily contribute to this: if the internet user can tell that the advertised goods/services do not originate from the trade mark proprietor, but instead originate from the advertiser, then there is no detriment to distinctive character.

Unfair Advantage:

• If the advertiser uses another’s trade mark as a keyword, and that trade mark has a reputation, with the result that the advertiser is riding on the coat-tails of that reputation, then the advertiser is taking unfair advantage of the trade marks’ reputation if its use of it is “without due cause”.
• If the advertiser’s goods are mere imitations of those supplied under the trade mark, then the use will be “without due cause” and infringement will result.
• If, however, the advertiser is not offering mere imitations, but a genuine alternative to the goods/services of the trade mark owner, then the use is with due cause, and its use of the trade mark is permissible on the grounds of fair competition.

The CJEU’s decision has created as many questions as it has answered. The CJEU applies a stricter criteria to the test for infringement in relation to the use of trade marks as keywords, as opposed to all other types of use. In particular:

• Even when the advertiser uses an identical mark to the trade mark to advertise identical goods/services, there is a requirement to show that this creates confusion as to origin. In relation to all other types of use, there is no need to show confusion – confusion is normally only necessary where either the mark used, or the goods/services for which it is used, are only similar (as opposed to identical) to the trade mark.
• There is no detriment to a trade mark’s distinctive character unless the use of it as a keyword creates confusion. Again, it is not clear why a need for “confusion” has been introduced in relation to keywords – it has not been necessary for other types of use.
• “Unfair advantage” will only occur if the use of the trade mark causes detriment to either the trade mark’s reputation or its distinctive reputation. However, unfair advantage has always previously been understood to be an entirely separate concept to detriment to distinctive character or reputation – i.e. infringement could be caused by taking unfair advantage of a trade mark’s reputation regardless of whether there was detriment to its distinctive character or reputation.

In Ate My Heart Inc v Mind Candy Limited, the High Court considered, on an application for an interim injunction, whether Mind Candy’s use of the mark "Lady Goo Goo", for the animated singer of a pop single, infringed Lady Gaga’s trade mark. In Ate My Heart Inc, the Judge held that Lady Goo Goo was an imitation of Lady Gaga causing detriment to the Lady Gaga mark’s distinctive character and that there was an argument that Lady Goo Goo took unfair advantage of Lady Gaga’s mark by free-riding on it.