Interflora Inc v Marks and Spencer plc

Subject Matter

TRADE MARK — Proprietor’s rights — Prevention of “use” — Claimants proprietors of trade mark having substantial reputation — Claimants’ competitor selecting trade mark as keyword for internet referencing service — Competitor offering goods and services identical to those covered by trade mark — Whether claimants entitled to prevent use — Circumstances in which proprietor of trade mark with reputation entitled to prevent use of mark as keyword — Council Directive 89/104/EEC, art 5(1)(a), (2) — Council Regulation (EC) 40/94, art 9(1)(a)(c)

(Case C-323/09); EU:C:2011:604; [2012] Bus LR 1440; [2011] WLR (D) 281, ECJ

TRADE MARK — Infringement — Proprietor's rights — Prevention of “use” — Proprietor’s right to prohibit use of advertising keywords corresponding to competitor’s trademark — Whether evidence of witnesses identified in survey admissible when survey itself not admissible

[2012] EWCA Civ 1501; [2013] Bus LR D46; [2013] 2 All ER 663; [2012] CN 82, CA

EVIDENCE — Expert evidence — Report — Claimants seeking to adduce academic journals as expert evidence — Whether only admissible in form of expert’s report tendered in accordance with rules — CPR Pt 35

[2013] EWHC 936 (Ch); [2013] WLR (D) 183, Ch D

TRADE MARK — Proprietor’s rights — Prevention of “use” — First defendant paying search engine to advertise its flower delivery service through keyword advertising — Claimant alleging infringement of trade mark — Whether use of sign deemed to convey single meaning even if understood by different people in different ways — Trade Marks Act 1994, ss 10(1)(2) — Council Directive 89/104/EEC, art 5(1) — Council Regulation 40/94/EC, art 9(1)

[2013] EWHC 1291 (Ch); [2013] WLR (D) 206, Ch D

TRADE MARK — Infringement — Injunction — First defendant held to be infringing claimant’s registered trade marks — Form of injunction to restrain further infringement

[2013] EWHC 1484 (Ch); [2013] CN 865, Ch D

TRADE MARK — Infringement — Burden of proof — Defendant paying search engine to advertise its flower delivery service through keyword advertising — Advertising appearing in response to entry into search engine of search terms consisting of or comprising word protected by claimants’ trade marks — Claimants alleging infringement of trade marks — Whether reasonably well-informed Internet users able to ascertain without difficulty whether goods or services advertised originating from trade mark proprietor — Whether burden of proof lying on defendant to prove non-infringement — Whether defendant using trade mark by securing flower-related generic terms as keywords — Council Directive 89/104/EEC, art 5(1)(a) — Council Regulation (EC) No 40/94, art 9(1)(a)

[2014] EWCA Civ 1403; [2015] Bus LR 492; [2014] WLR (D) 473, CA

TRADE MARK — Infringement — Appeal — Consequential orders following appeal against finding of infringement — Council Directive 89/104/EEC, art 5(1)(a) — Council Regulation (EC) No 40/94, art 9(1)(a)

[2014] EWCA Civ 1448; [2014] CN 2034, CA

Appellate History