INTERFLORA: ON BRAND NAMES, ADWORDS AND COMPARATIVE ADVERTISING

Interflora: on brand names, AdWords and comparative advertising

On 22 September 2011 the ECJ clarified in Interflora when a brand owner can act against third party use of the brand as an AdWords. Marks & Spencer competes with the international flower delivery service by Interflora. M&S had selected the well-known brand name INTERFLORA as AdWord. A Google search for “Interflora" revealed the following advertisement.

http://www.marksandspencer.com/flowers

Gorgeous fresh flowers and plants.

Order by 5 p.m. for next day delivery.

Since Google France we already knew that use of a brand AdWord for similar goods can be prohibited if it adversely affects a trademark function. Take the origin function: the ad must show whether the advertised product comes from (an affiliate of) the trademark owner or from a third party. A new development is that the court can take into account “general knowledge of the market". If everyone knows that M&S has nothing to do with Interflora, then the name "M&S" alone in the advertisement makes it transparent enough. The advertising function is not harmed by AdWords because the brand owner can still inform and convince the consumer with the brand name. Now he has to pay a bit more to stay at the top of the Google Ads list. The investment function can be damaged if the use of the AdWord “substantially interferes with the proprietor’s use of its trade mark to acquire or preserve a reputation capable of attracting consumers and retaining their loyalty". The owner will have to make more effort to preserve a reputation and must allow that some consumers will ignore the branded product precisely because of the competing AdWords advertisement. The owner of a well-known brand can act against dilution if advertising using the AdWord contributes towards turning the brand (INTERFLORA) into a generic term (a synonym for a flower delivery service). The ECJ holds that this will not happen too readily, perhaps only in case of a likelihood of confusion. ‘Free riding on the coat tails’ that seemed to be widely prohibited since l’Oréal/Bellure specifically concerns imitations. Whether this also applies in other cases remains to be seen.

Interflora can also be applied outside of AdWords for advertising in which comparison with a well-known brand occurs. Use of a well-known trademark in comparative advertising does not readily result in trademark infringement. The first application of Interflora meanwhile is a fact: the Court of Appeal of The Hague ruled on 22 November 2011 that Medicomfort can bring its memory foam mattresses to the public's attention using the AdWord TEMPUR:

Need a New Mattress?

Order a Medicomfort Mattress. Up to 40% cheaper than other top brands!

Medicomfortmatras.nl

Adequately transparent, no detriment to a trademark function, and moreover a due cause to use the brand name TEMPUR. The Court of Appeal assumes an Internet user who is not easily misled. Conclusion: brand AdWords are given the benefit of the doubt. Trademark owners have lost ground. An advertiser who transparently offers an actual alternative for the branded product may use a brand AdWord for it, even if the brand is well known. This is “fair competition" and hence a due cause.

Maarten Haak

Hoogenraad & Haak advocaten

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INTERFLORA: ON BRAND NAMES, ADWORDS AND COMPARATIVE ADVERTISING

Interflora: on brand names, AdWords and comparative advertising