Interflora Inc & Anor v Marks and Spencer Plc & Anor

Following later guidance from the Court of Justice, a national court may withdraw referred questions that have become unnecessary, while maintaining questions where genuine uncertainty remains about the applicable trade-mark infringement criteria. A reference should be clarified so that it identifies the precise legal issue requiring an answer. Where the Court of Justice’s guidance does not resolve the relationship between double-identity infringement, trade-mark functions, dilution and free-riding with sufficient clarity, the national court may retain the relevant questions. Questions concerning a search engine operator’s liability and accessory liability may be withdrawn where the operator’s lack of primary liability makes them academic.

The claim concerned alleged trade-mark infringement arising from keyword advertising. The court had previously referred ten questions to the Court of Justice under Article 234 EC, now Article 267 TFEU, concerning the advertiser’s and search engine operator’s use of a trade mark, the effect on trade-mark functions, dilution, free-riding, intermediary exemptions and accessory liability.

After the Court of Justice decided Google France SARL v Louis Vuitton Malletier SA in Joined Cases C-236/08 to C-238/08, the Court requested clarification and asked whether the reference should be maintained. The issue was whether that judgment resolved the questions sufficiently for the national court to determine the dispute.

1. Questions 5–10. In the light of the acceptance that Google France SARL v Louis Vuitton Malletier SA established that a search engine operator did not use the sign in the relevant circumstances, there could be no primary trade-mark infringement liability on the part of Google. Questions concerning the operator’s liability, intermediary exemptions and Marks & Spencer’s alleged joint liability therefore did not arise and were withdrawn. (see paras [12]–[14])
2. Question 3. The guidance in Google France SARL v Louis Vuitton Malletier SA did not provide as much clarity as desirable on the content of the trade-mark functions criterion, the circumstances in which a function was liable to be affected, and the relationship between double-identity claims under Article 5(1)(a) of the Trade Marks Directive and claims under Article 5(2). Question 3 was therefore maintained.
3. The court accepted that question 3(b) sought guidance on when an advertiser using a sign identical to a well-known competitor’s mark as an AdWord acted to the detriment of distinctive character through dilution, or took unfair advantage of distinctive character or repute through free-riding. The parenthesis containing the assumption that such detriment or advantage existed was deleted to make the question clearer. (see paras [17]–[20])
4. Questions 1, 2 and 4. These questions were maintained because it remained unclear whether all the specified acts constituted use of the sign by the advertiser, whether such use was in relation to the relevant goods or services, and whether answers to those questions would assist with question 3. (see paras [21]–[22])

The reference was accordingly withdrawn as to questions 5–10 and maintained as to questions 1–4, with question 3(b) clarified.

Not an appeal. The judgment concerned the court’s reconsideration and partial withdrawal of an earlier reference to the Court of Justice.