Interflora Inc & Anor v Marks and Spencer Plc & Anor

For trade mark infringement, arranging for an advertisement to appear when a consumer searches for a protected sign may constitute use of that sign, even where the advertiser selected a different keyword and the result arose through broad matching without negative matching.

Remedies must be proportionate under Article 3(2) of the Enforcement Directive. That requirement does not displace the established practice of granting a general injunction, although particular circumstances may justify a specific form. A Community trade mark injunction should ordinarily extend throughout the European Union unless the defendant proves that use of the sign does not affect, or is not liable to affect, the mark’s functions in particular Member States.

Following the trial judgment, in which Interflora Inc & Anor v Marks and Spencer Plc & Anor was found to involve infringement of Interflora’s trade marks, the court considered the consequential form and territorial scope of the injunction.

The claimants sought a general injunction covering bidding on Interflora-related terms and failure to negative match those terms. The defendants proposed a more specific injunction confined to conduct failing the applicable trade mark test, and sought to limit the Community trade mark injunction to the United Kingdom.

The issues were whether broad matching without negative matching constituted use of the mark, whether a general injunction was disproportionate, and whether the Community trade mark injunction should be EU-wide.

1. Use through broad matching. The court held that the defendant used the sign “interflora” when its broad-matching arrangements caused its advertisement to appear after a consumer searched for “interflora”. The sign appeared on the search results page alongside the defendant’s advertisement. It was immaterial that the defendant had selected another keyword. The use occurred in the course of trade and in relation to identical goods and services.

2. Form of injunction. Article 3(2) of the Enforcement Directive requires remedies for trade mark infringement to be effective, proportionate and dissuasive, while avoiding barriers to legitimate trade. That did not make a general injunction disproportionate in this case. The court retained a discretion to grant a specific injunction, particularly where a general order could impede legitimate parallel imports, but those considerations did not apply here. The defendant had deliberately engaged in conduct known to carry an infringement risk, and the infringements involved numerous signs and matching algorithms. A concise specific order would risk either under-protecting the trade mark owner or imposing uncertainty on the parties.

3. The proposed specific injunction was also defective because it failed to address broad matching without negative matching and merely required the parties to consult the trial judgment to determine the order’s practical effect. Future issues concerning differently worded advertisements could be addressed through declaratory relief.

4. Territorial scope. Under DHL Express France SAS v Chronopost SA [2011] ECR I-2801, a prohibition against further infringement of a Community trade mark should ordinarily extend throughout the European Union. The defendant bore the burden of proving that use of the sign did not affect, and was not liable to affect, the functions of the mark in other Member States. It had not done so. An EU-wide injunction was therefore granted for the Community trade mark.

5. A general injunction restraining infringement of the Trade Marks was granted. The Community trade mark injunction had EU-wide effect.

The judgment followed the trial judgment in the same proceedings, [2013] EWHC 1291 (Ch), which found infringement of Interflora’s trade marks. This judgment determined consequential issues concerning the form and territorial scope of the injunction.