Initial interest confusion dead in UK trade mark law?

Interflora v Marks & Spencer

In November, the Court of Appeal gave its decision in Interflora v Marks & Spencer. This was the latest round of the long-running dispute concerning M&S's use of INTERFLORA as a keyword in Google Adwords, for the promotion of M&S's own flower delivery service.

In May 2014, Arnold J gave the first instance decision on liability, coming down in favour of Interflora. Following his earlier reference to the Court of Justice of the European Union (CJ)1 and applying the test in Google France, he decided that M&S's adverts did not enable normally informed and reasonably observant Internet users, or enabled them only with difficulty, to tell whether the adverts related to goods/services from Interflora (or a connected entity), or from a third party.

M&S appealed on various grounds, including challenging the judge's approach to the burden of proof in cases of 'double identity' infringement.

Initial interest confusion

Particularly interesting is the Court of Appeal's criticism of the controversial doctrine of 'initial interest confusion', which has been an increasingly prominent feature of UK trade mark cases since Arnold J embraced it in his 2010 decision in Och Ziff 2. The doctrine allows for a finding of liability where consumers may be initially confused as to the origin of goods/services, even if the confusion is dispelled by the time they make a purchase.

In Interflora, Arnold J had extended this to cases of 'double identity' (ie, use of an identical mark for identical goods/services), whereas Och Ziff had only involved similar marks.

In a strident rejection of the doctrine, the Court of Appeal said

In our judgment it is not helpful to seek to import the doctrine of initial interest confusion into EU trade mark law, at least so far as it applies to the use of a sign the same as or similar to a trade mark as a keyword in an internet referencing service, and it has the potential positively to mislead.

In our view the doctrine of initial interest confusion is therefore an unnecessary and potentially misleading gloss on the tests the [CJ] has articulated and we think it should perform no part of the analysis of our national courts in claims of the kind before us.

Whilst this was said in the context of a keyword advertising case, commentators are already viewing the Court of Appeal's remarks as having broader application. Certainly we expect to see a shift away from 'initial interest confusion' in future trade mark cases.

Meanwhile – and very unusually – the Court of Appeal has remitted this case back to the trial judge for a retrial. The saga of Interflora v Marks & Spencer therefore still lives on. We wait with interest to see how Arnold J approaches the case second time around.

Notes

1. See "Interflora v Marks & Spencer - Use of AdWords Presents Thorny Issue: in our November 2011 newsletter: www.dyoung.com/trademarknewsletter-nov2011
2. See "L'Oréal v eBay - ECJ Responds to UK High Court Questions" in our January 2011 newsletter: www.dyoung.com/trademarknewsletter-january2011

In short

• Court of Appeal has remitted Interflora v M&S back to the Arnold J for a retrial.
• Court of Appeal rejects doctrine of 'initial interest confusion' in EU trade mark law.

Case details at a glance

Jurisdiction: England and Wales
Court: England and Wales Court of Appeal (Civil Division)
Parties: Interflora Inc & Anr v Marks & Spencer plc
Citation: [2014] EWCA Civ 1403
Date: 05 November 2014
Full decision: http://dycip.com/interflora1114