This month the UK High Court came out in favour of Interflora in a long-running dispute with Marks & Spencer (M&S) over use of ‘interflora’ as a keyword trigger for advertisements on Google. And the decision is interesting because the word 'interflora' didn't appear in the actual wording of the M&S Google ads.
The case shows there are no hard and fast rules about the legality of picking a competitor's brand as a keyword in the Google Adword business. Marketers may need to review keyword purchasing strategies and what statements are being made in the ads.
It's happened before…
In March, the New Zealand court had to consider a similar issue. An application was made by InterCity Coachlines for an urgent injunction to stop Nakedbus from using Intercity as a keyword and in advertising. The court refused to grant the injunction. But the issue only had to be considered in summary. InterCity could take the matter further, which would allow the court to fully consider the issue. Inevitably the recent Interflora vs M&S decision would be looked at.
The thorn between Interflora and M&S
The results of a Google search give two types of results. There are the organic results and also at the top or right of the page ‘sponsored links’ or ‘Ads’. Google allows advertisers to pick words that will trigger the appearance of advertisements. These words are the keywords or Adwords. They can be common descriptions, your own brand, or even a competitor's brand.
In this case, M&S had worked out that 'interflora' was the most commonly searched term in the flower sector. By using 'interflora' as a keyword, M&S’s ads would appear more often than when it used a generic term, such as flowers, as an Adword. Interflora was not happy and sued to get M&S to stop.
The M&S ads were headed Marks & Spencer Flowers, had some wording offering flowers for sale, and used the M&S website address. There was no use of the word 'interflora' in the ads.
If the advertisements were in a magazine or newspaper, the lack of any reference to the trademark would be a good defence to a claim the trademark was being infringed. Surely only the terminally confused—or as one judge put it in a case, a moron in a hurry—could be confused by such an ad? Isn’t an ad appearing on the internet just a modern version of a print ad?
One of M&S’s arguments was along the lines that people using the Google search engine are sophisticated enough to understand that ads appear with the results. Accordingly, consumers searching 'interflora' on the Google search engine would understand that the M&S’s ads were for its flower service and not the Interflora service.
M&S also said that a number of earlier court cases showed that using a competitor’s brand as an Adword is not a trademark infringement. The judge did not accept that there was any such general rule. But neither did he say keyword advertising is inherently bad. Instead, every case will depend on its facts.
The judge said he had to take the view of what an average person might think about the M&S ad. He thought that while internet literacy has increased over the last five years, a significant proportion of internet users would not appreciate that the ads were triggered by the keyword related to the search term the user entered.
Also significant was the nature of the Interflora business. Many differently named florists are part of the Interflora network of florists.
He concluded that Interflora’s trademark rights were infringed by Marks & Spencer. The M&S ads "...did not enable reasonably well-informed and reasonably attentive internet users, or enabled them only with difficulty, to ascertain whether the service referred to in the advertisements originated from [Interflora], an undertaking economically connected with [Interflora], or originated from a third party.... On the contrary, a significant proportion of the consumers ... were led to believe, incorrectly, that M&S's flower delivery service was part of the Interflora network."
New Zealand law is not identical to the UK law on which the Interflora case was decided. But the general proposition that each case will turn on its own facts rather than there being a general rule, holds true. Further given the judge found the ads were misleading, the difference in law may not make much difference.
Despite the InterCity decision in New Zealand, marketers should not think it is open slather for using competitor's brands as keywords for Google advertising. What would the average consumer think?
- Nigel Robb is a special counsel at AJ Park in Wellington.