Interflora, Inc and Another v Marks and Spencer Plc and Another: ChD 22 May 2009

Each of the parties provided a service delivering flowers. The claimant had a trade mark, and the defendants each purchased the use of that trade mark and variations of it with a search engine (Google) so that a search under the trade mark produced references also to the defendants’ web-sites. The bids for these words increased the claimant’s own costs of advertising their own trade mark through Google very substantially. The claimant alleged infringement by the defendants. Several cases raising related issues were awaiting deivery of judgments by the ECJ. The defendant requested a stay, and the claimant a reference to the ECJ.
Held: There would be a reference, but no interim injunction would be granted against the defendants. It was better to make a reference now. The factual issues were not substantial, and though some costs might be wasted if the decisions of the ECJ in the existing anticipated answered the questions fully, there was a likelihood that particular quaestion in this case would still need to be answered.

Arnold J
[2009] EWHC 1095 (Ch), [2009] ETMR 54, [2009] RPC 22
First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks 5, European Parliament and Council Directive 2008/95/EC of 22 October 2008
England and Wales
CitedArsenal Football Club Plc v Reed CA 21-May-2003
The claimant had obtained a judgment in the European Court on reference from the Chancery Division as to its claim against the defendant. On attempting to have that judgement enforced, the Chancery court found that the European Court had made a . .
CitedO2 Holdings Ltd and Another v Hutchison 3G UK Ltd ChD 11-Mar-2005
The idea of the ‘average consumer’, the arbiter of similarity in trade mark disputes, is a legal construct which tends to emphasise that similarity is an autonomous concept of European law. Similarity and likelihood of confusion are intimately bound . .
CitedO2 Holdings Ltd and Another v Hutchison 3G Ltd CA 5-Dec-2006
The court faced an allegation based on allegedly false comparative advertising, and referred to the European Court the question: ‘Where a trader, in an advertisement for his own goods or services uses a registered trade mark owned by a competitor . .
CitedCeline SARL v Celine SA (Approximation Of Laws) ECJ 18-Jan-2007
Celine SA, set up before 1945, traded in Paris creating and marketing clothes and accessories, and had a French registered trade mark Celine for clothes and shoes. Celine Sarl was set up in 1992 as successor to a business selling clothing and . .
CitedAdam Opel AG v Autec AG, intervener: Deutscher Verband der Spielwaren-Industrie eV (Approximation Of Laws) ECJ 25-Jan-2007
Europa Reference for a preliminary ruling Trade Marks Article 5(1)(a) and (2), and Article 6(1)(b) of the First Directive 89/104/EEC Right of a trade mark proprietor to prevent use by a third party of a sign . .
CitedO2 Holdings Limited and O2 (UK) Limited -v -Hutchison 3G UK Limited ECJ 31-Jan-2008
ECJ (Opinion of Advocate General Mengozzi) Directive 84/450/EEC Comparative advertising Use of a competitor’s trade mark or of a sign similar to a competitor’s trade mark in comparative advertising Applicability . .
CitedJohns v Solent SD Ltd CA 12-Jun-2008
The court considered whether it was proper to issue a stay of proceedings to await a judgement in the EJ on a related issue. . .
CitedJohns v Solent SD Ltd CA 12-Jun-2008
The court considered whether it was proper to issue a stay of proceedings to await a judgement in the EJ on a related issue. . .
CitedBoehringer Ingelheim Kg and Another v Swingward Ltd CA 21-Feb-2008
The court considered the issue of a stay of proceedings to await a decision of the ECJ for guidance. . .

Cited by:
CitedL’Oreal Sa and Others v Ebay International Ag and Others ChD 22-May-2009
The court was asked as to whether the on-line marketplace site defendant was liable for trade mark infringements by those advertising goods on the web-site.
Held: The ECJ had not yet clarified the law on accessory liability in trade mark . .
See AlsoInterflora Inc and Another v Marks and Spencer Plc and Another ChD 29-Apr-2010
Response to request for clarification of reference to the ECJ. . .
ReferenceInterflora 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 – . .

Lists of cited by and citing cases may be incomplete.

Intellectual Property, European

Updated: 31 October 2021; Ref: scu.346315