Mark use in search engine was infringing use
The claimant mark owner alleged that the defendant, in paying a search engine to use the claimants mark as a search keyword was infringing its rights. The defendant argued that the use of the same sign in different contexts could amount to a different and non-infringing use.
Held: The defence failed. European trade mark law did not include any rule that the context of use of a sign was deemed to convey a single meaning in law even though different people might understand it in different ways. It was enough that a significant proportion of users might be confused.
Arnold J
[2013] WLR(D) 206, [2013] EWHC 1291 (Ch)
Bailii, WLRD
Trade Marks Act 1994 10(1)(2), Council Regulation 40/94/EC 9(1), Council Directive 89/104/EEC 5(1)
England and Wales
Citing:
See Also – Interflora Inc and Another v Marks and Spencer Plc and Another ChD 29-Apr-2010
Response to request for clarification of reference to the ECJ. . .
ECJ Opinion – Interflora And Others v Marks and Spencer plc, Flowers Direct Online Limited ECJ 24-Mar-2011
ECJ (Opinion) Trade marks – Keyword advertising corresponding to the trade mark of a competitor of the advertiser – Trade marks with a reputation – Blurring – Tarnishment – Free-riding – Directive 89/104 – . .
ECJ – Interflora And Others v Marks and Spencer plc, Flowers Direct Online Limited ECJ 22-Sep-2011
ECJ Trade marks – Keyword advertising on the internet – Selection by the advertiser of a keyword corresponding to a competitor’s trade mark with a reputation – Directive 89/104/EEC – Article 5(1)(a) and (2) – . .
See Also – Interflora Inc and Another v Marks and Spencer Plc and Another ChD 20-Jun-2012
Application for permission to to adduce witness evidence at trial from witnesses gathered from two pilot surveys. . .
Cited – Marks and Spencer Plc v Interflora Inc and Another CA 20-Nov-2012
The court gave guidance on the use of surveys in trials for passing off and trade mark infringement.
Lewison LJ reviewed the practice of conducting interviews and surveys in passing off cases: ‘The upshot of this review is that courts have . .
See Also – Interflora Inc and Another v Marks and Spencer Plc and Another ChD 21-Feb-2013
‘The Claimants (‘Interflora’) seek the permission of the Court to adduce in evidence the witness statements of 13 witnesses at the trial of this action scheduled for mid April 2013. Interflora do not accept that they need the Court’s permission, but . .
See Also – Interflora Inc v Marks and Spencer Plc CA 22-Mar-2013
Interflora had been refused permision to adduce survey evidence, but now appealed against refusal of permission to adduce evidence of confusion by witness statements.
Held: Appeal allowed. Reasons to follow. . .
See Also – Interflora Inc and Another v Marks and Spencer Plc CA 5-Apr-2013
The court gave its reasons for allowing the claimant to bring additional witness evidence as to confusion as opposed to survey evidence. . .
See Also – Interflora Inc and Another v Marks and Spencer Plc and Another ChD 15-Apr-2013
The defendant objected to the introduction of certain evidence by the claimant under a Civil Evidence Act notice. . .
Cited by:
Main judgment – Interflora Inc and Another v Marks and Spencer Plc and Another ChD 12-Jun-2013
The court considered the form of the injunction requested to give effect to the earlier full judgment in the case brought, requiring the defendant to discontinue any use of the terms complained of as infringing the claimant’s registered marks as . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Leading Case
Updated: 11 November 2021; Ref: scu.510000