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“The Power of Flowers in Testing the Limits of Trademark Law” – Adwords Adding to the ‘Confusion’ Surrounding Infringement? A Critical Analysis of the European Court of Justice’s Decision in Interflora Inc & Anor v Marks & Spencer Plc & Anor (Case C-323/09).

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Abstract

In a world where internet “economic…network effects” are essential to commerce, it is no surprise that the CJEU has been tasked with interpreting the pre-internet Trademark Directive 89/104 to determine if infringement occurs in cases concerning the junior use of trademarked keywords online. However, as Fhima outlines, “keyword cases demonstrate …underlying IP law tensions”, between protection of consumer choice through effective competition in the market, and the development of functions to uphold property rights . It is submitted, Interflora Inc v Marks & Spencer is no exception, and after a brief outline, it is against this backdrop that some of the decision’s main issues will be analysed; accumulating in a conclusion that while the judgement is at times balanced and theoretically significant, it suffers from practical implementation ambiguities for the referring Court to apply, in adding to the holistic trend of conflating Directive Articles, arguably making most infringement dependent upon satisfaction of origin confusion.
“The.Power.of.Flowers.in.Testing.the.Limits.of.Trademark.Law” – Adwords.Adding.to.the
‘Confusion’.Surrounding.Infringement?
A.Critical.Analysis.of.the.European.Court.of.Justice’s.Decision.in.Interflora Inc & Anor
v Marks & Spencer Plc & Anor (Case C-323/09).
1.0,Introduction
In a world where internet “economic…network effects”1 are essential to commerce, it is no
surprise that the CJEU has been tasked with interpreting the pre-internet Trademark Directive
89/104 2 to determine if infringement occurs in cases3 concerning the junior use of
trademarked keywords online.4 However, as Fhima.outlines,.“keyword cases demonstrate …
underlying IP law tensions”,5 between protection of consumer choice through effective
competition in the market,6 and the development of functions to uphold property rights .7 It is
submitted, Interflora Inc v Marks & Spencer 8 is no exception,.and after a brief outline,.it is
against this backdrop that some of the decision’s main issues will be analysed;9 accumulating
in a conclusion that while the judgement is at times balanced and theoretically significant,.it
suffers from practical implementation ambiguities for the referring Court to apply,.in adding
1 Roger Blair and Daniel Sokol, The Cambridge Handbook of Antitrust, Intellectual Property, and
High Tech, (1st edn, Cambridge University Press 2017), Chapter 3, Babette E.Bolick, ‘The Economics
of the Internet ’at.[p.43].
2 First Council Directive 89/104/EEC and Regulation 40/84. Note: The Court outlined in Interflora
Inc & Anor v Marks & Spencer Plc & Anor (Case C-323/09)[2011] that the interpretation by the Court
of Directive 89/104/EEC would be of equal applicability to Directive 2008/95 and Regulation
207/2009 which have since replaced the legislation at issue in the instant case.
3 See, Google France Sarl v Louis Vuitton Malletier SA (C-236/08) [2011]Bus.L.R.1, L’Oreal SA v
Bellure NV (C-487/07) [2009] E.C.R.I-5185.
4 See further, Andrej Savin, Research Handbook On EU Internet Law (1st edn, Edward Elgar
Publishing 2014), Chapter 6, Ilanah Simon Fhima, ‘Trademark Law and Advertising Keywords’ .at.
[p.143].
5 Andrej Savin, Research Handbook On EU Internet Law (1st edn, Edward Elgar Publishing 2014),
Chapter 6, Ilanah Simon Fhima, ‘Trademark Law and Advertising Keywords’ .at.[p.143-168].
6 Note: It is also contested, this highlights Raz’s legal theory of many market options playing a role in
the court’s reasoning. See further, Matthew Kramer, ‘In Defence of Legal Positivism’ (1st edn, Oxford
2003).
7 See, Arsenal Football Club v Reed (C-206/01) [2002] E.C.R I-10273.
8 Interflora Inc & Anor v Marks & Spencer Plc & Anor (Case C-323/09)[2011].
9 Note: The issues that are not in the scope of this case note are generic terms as a form of dilution
and the developments upon the advertising function.
1
to the holistic trend of conflating Directive.Articles,10 arguably making most infringement11
dependent upon satisfaction of origin confusion.
2.0.Case.Outline
Interflora,.a worldwide flower delivery network holding a UK and Community Trademark
with a “substantial reputation”,12 sued M&S in the UK High Court13 for infringement under
Art.5(1)(a)14 and Art.5(2)15of Directive 89/104,16 for selecting and paying for Interflora’s
trademark as a keyword, that when imputed into Google,.the M&S flower-service
advertisement would be displayed..However, the trademark was not contained within the
advertisement..Subsequently,.Arnold J remitted questions17 to the CJEU for clarification on
the aforementioned,18 giving rise to the instant decision.
3.0.CJEU’S.Reasoning.and.Analysis
Although,.the CJEU did not consider the questions sequentially,.it is submitted,.the Court
under headings,19 enunciated significant interpretations of Art.5(1)(a)20 and Art.5(2),21 in
confirming the possibility of keyword advertiser infringement post Google France .22 It is
under these headings analysis will follow.
10 See further, Tobias Cohen Jehoram, ‘The Function Theory in European Trade Mark Law and the
Holistic Approach of the CJEU’, (2012) 102 Trademark Reports 1243.
11First Council Directive 89/104/EEC: Art.5(1)(a), Art.5(1)(b), Art.5(2).
12 (n 8).at.[Para 16].
13 Interflora Inc & Anor v Marks & Spencer Plc & Anor [2010] EWHC 925 (Ch).
14 Art.5(1)(a), First Council Directive 89/104/EEC.
15 Art.5(2), First Council Directive 89/104/EEC.
16 Art Note such now repealed by court notes that interpretation given shall apply to both.
17 See, (n 8).at.[Para 20]. Note: The importance of the questions remitted was that such were broader
than the Court had previously been asked to give interpretative guidance on.
18 Art.5(1)(a) and Art.5(2), First Council Directive 89/104/EEC.
19 (n 8).at.[Para 44],[Para 60],[Para 76],[Para 84].
20 (n 14).
21 (n 15).
22 Google France Sarl v Louis Vuitton Malletier SA (C-236/08) [2011] Bus.L.R.1. See further,
Jonathan Cornthwaite, 'Say It With Flowers: The Judgement Of The Court Of Justice Of The
European Union In Interflora V Marks & Spencer' (2012) 6 European Intellectual Property Review,
noting, “Google France held that search providers could not be held liable, but went on to enunciate
obiter against the advocate general’s opinion that keyword advertisers could possibly be held liable,
but further clarification was needed, with such being brought by Interflora”.
2
3.1.Article 5.(1)(a).and.Function.Theory
- Further.Expansion.of.Harm.to.Origin.Function?
Although one could purport,.the Court added nothing to origin infringement in applying
jurisprudence,23 to hold Art.5(1)(a)24 is non-absolute,.in that,.the proprietor of a trademark
identical to the keyword used, can only prevent use if such has an adverse effect on a
function, and that the standard for assessing such is the “reasonable….internet user”,25 in
confirming the teleological interpretative26 trend27 of imputing Art.5(1)(b)’s28 confusion
standard into Art.5(1)(a).29
However, it is submitted the Court30 made notable enunciations,.as although,.this trend
favours junior user competition, in increasing difficulty for proprietors to invoke Art.5(1)
(a).31 It is contended, the Court balances such by building upon jurisprudence32 in confirming
23 Google France Sarl v Louis Vuitton Malletier SA (C-236/08) [2011] Bus.L.R.1., Portakabin Ltd v
Primakabin BV [2010]ECR I-6963, Die BergSpechte Outdoor Reisen und Alpinschule Edi Koblmuller
GmbH v Guni (C-278/08) [2010]E.C.R I-2517.
24 (n 14).
25(n 8).at.[Para 44]: ‘the origin function is adversely affected if the advertisement does not enable
reasonably well- informed and reasonably observant internet users [hereinafter: the user], or enables
them only with difficulty, to ascertain whether goods or services referred to in the advertisement
originate from the proprietor of the trade mark or an undertaking economically connected to it.”.
Note the Court clarified at. [para 50], “the fact some internet users …had difficulty is not a sufficient
basis to find adverse effect to origin”.
26 Note: Martin Senftleben, ‘Keyword Advertising in Europe – How the Internet Challenges Recent
Expansion of EU Trademark Protection’ (2011) Connecticut Journal of International Law[27] goes as
far as to argue that “the court does not even attempt to justify this imputation of a confusion standard
into Art.5(1)(a) with any reference back to the Directive”.
27 (n 8) at. [Para 44]. See further, Google France Sarl v Louis Vuitton Malletier SA (C-236/08)
[2011] Bus.L.R.1. at.[Paras 83-84], Portakabin Ltd v Primakabin BV [2010]ECR I-6963.at.[para 34].
Emphasis added: Jonathan Cornthwaite, 'Say It With Flowers: The Judgement Of The Court Of
Justice Of The European Union In Interflora V Marks & Spencer' (2012) 6 European Intellectual
Property Review.
28 First Council Directive 89/104/EEC Article 5(1)(b).
29 (n 14).
30(n 8) at. [Paras 45-51].
31 (n 14).
32 Google France Sarl v Louis Vuitton Malletier SA (C-236/08) [2011] Bus.L.R.1. at.[paras 89-90],
Portakabin Ltd v Primakabin BV [2010]ECR I-6963.at.[para 35].
3
an “advertiser.duty.of.transparency,”33 in outlining if the advertisement is “vague”34 and the
the user”35 is unable to determine origin,.Art.5.(1)(a)36 will be satisfied. It is
submitted,.while this is a continuation of transposing “deception.theory”37 into the “property
centric”38 Art.5.(1)(a),39 it ironically aids in limiting restriction of proprietor’s rights, by as
Ohly contends,40 heralding a “fundamental.shift” 41 in somewhat burdening advertisers to
indicate origin,.bringing some balance to this jurispridential trend.42
Nevertheless,.it is submitted,,perhaps the most innovative Art.5.(1)(a) 43 interpretation is the
expositional formulation of network confusion.44 This is contended,.as the Court outlined,45 if
advertisements do not enable “ users”46 to determine if the advertiser was part of the
proprietor’s network,.the origin function would be adversely affected..It is argued,.that such
is significant as it is the only time the Court outlines a faceted framework for the referring
Court to follow,.in requiring determination of market knowledge of whether M&S was part of
Interflora’s network,.and if not,.whether the advertisement denounces such.
33Note: It is noted this may be to counteract initial interest confusion, however, the Court did not
expressly address the issue, cumulating in perhaps a missed opportunity. See further, Andrej
Savin, Research Handbook On EU Internet Law (1st edn, Edward Elgar Publishing 2014). Chapter 6,
Ilanah Simon Fhima,‘Trademark Law and Advertising Keywords’ .at.[p.156].
34 (n 8).at.[Para 45].
35 (n 8).at.[Para 44].
36 (n 14).
37 See, Tobias Cohen Jehoram, ‘The Function Theory in European Trade Mark Law and the Holistic
Approach of the CJEU’, (2012) 102 Trademark Reports 1243, Luis H. Porangaba, ‘A Contextual
Account of the Trade Mark Functions Theory’ (2018) Intellectual Property Quarterly.
38 Justine Pila and Paul Torremans, ‘European Intellectual Property Law’ (1st edn, Oxford 2016)
39 (n 14).
40 Andrej Savin, Research Handbook On EU Internet Law (1st edn, Edward Elgar Publishing 2014).
Chapter 6, Ilanah Simon Fhima, ‘Trademark Law and Advertising Keywords’ .at.[p.156].
41 ibid.
42 See further, Tullio Ascarelli, ‘Teoria della concorrenza e interesse del consumatore’ (1954) Riv
trim dir proc civ, 869. See also, Elisa Moro, ‘Protection of Reputed Trademarks and Keywords:
Looking for Ariadne’s Thread Amoung Flowers, Perfumes and Bags’, University College London
Journal of Law and Jurisprudence 2[64](2013).
43 (n 14).
44 Note: This was in confirmative response to Question 4(b) referred by the UKHC:See, (n 7).at.
[para 49], emphasis added, Andrej Savin, Research Handbook On EU Internet Law (1st edn, Edward
Elgar Publishing 2014). Chapter 6, Ilanah Simon Fhima, ‘Trademark Law and Advertising
Keywords’at.[p.156].
45(n 8).at.[Para 49].
46 (n 8).at.[Para 44].
4
Although,.it is noted,.this is favourable,.as the CJEU has given practical guidance,.it is
submitted,.such does not address knowledge determinability difficulties.47 Further,.it is
argued,.this test is onerous,.as it requires advertisers to prove a negative,.and if it cannot, a
transparency burden is implemented..Thus, in the overall balance between trademark rights
and fair competition,.these Art.5.(1)(a)48 interpretations favour the former..However,.it is
contended,.these pronouncements are a recognition that confusion imputation into Art5.(1)
(a)49 significantly undermined property rights and these advertiser requirements are perhaps a
balancing endeavour..However,.it is questionable what broad impact network confusion may
have,.as such seems factually-specific.
-Investment.Function – Breaking.New.Infringement.Ground.for.Trademark
Proprietors.in.Theory.Rather.than.Practice?
Contestably the most radical Art.5(1)(a)50 interpretation,.is the expositional analysis of
investment function..Expanding on jurisprudence,51 the Court purported that investment
function would be adversely affected if trademark “use by a third party….substantially
interfered with…proprietor’s use…to acquire or preserve…reputation”.52 Although,.it is
noted, this “tentative.explanation”53 is a positive development in “functional.theory”54 and
thus,.favours a balance towards proprietor’s rights..It is submitted,.suffering from the same
lack of infringement examples,55 as Google France56 on advertising, the Court has failed to
provide adequate guidance.
47 Note: This can be observed post reference in: Interflora Inc & Anor v Marks & Spencer Plc &
Anor [2013] EWHC 1291 (Ch).per Arnold J, at.[para 45].
48 (n 14).
49 (n 14).
50 (n 14). Emphasis added, Alexander von Mühlendahl, Dimitris Botis, Spyros Maniatis, Imogen
Wiseman, Trade Mark Law in Europe, (3rd edn, Oxford University Press, 2016).
51 Arsenal Football Club v Reed [2003] 3 WLR 450, L’Oreal SA v Bellure NV (C-487/07) [2009]
E.C.R.I-5185.
52 (n 8).at.[Para.64].
53 Parhun Safari and Dr Anton Van Dellen, ‘Protecting Trade Marks in the Era of Adwords’,(2018)
European Intellectual Property Journal.
54 See, Tobias Cohen Jehoram, ‘The Function Theory in European Trade Mark Law and the Holistic
Approach of the CJEU’, (2012) 102 Trademark Reports 1243, Luis H. Porangaba, ‘A Contextual
Account of the Trade Mark Functions Theory’ (2018) Intellectual Property Quarterly.
55 Ren- En Lim, ‘Google’s Decision to Permit Competitors and Rivals to Purchase Keywords Of
Trademarks Acceptable as Long as It Does Not Cause Consumer Brand Confusion’ (2013) UK Law
Students Review.13.
56 Google France Sarl v Louis Vuitton Malletier SA (C-236/08) [2011] Bus.L.R.1.
5
This is argued,.as the Court only outlined non-infringement instances,57 and thus, left
discretion to the referring Court..It is argued,.although such examples recognise trademark
rights shall not inhibit competition,58 this discretion may exacerbate a fragmentation of pan-
European approaches,.creating commercial uncertainty,.something undesirable approaching
Brexit..It is argued,.this is worrying considering the prevalence of the internet as a cross-
jurisdictional business forum,59 increasing the need to preserve single market harmony in this
regard.60 Further,.it is notable,.this ambiguity can be observed in Arnold J’s application post-
reference, conceptualising the approach’s inherent practical implementation issues.61
Further,.although the argument is noted that the decision may contradict L’Oreal,62 that
“additional.functions.are.not.limited.to.reputed.trademarks”,63 due to the practical
difficulties in ascertaining what is meant by “acquiring reputation”,64 as the Court’s rationale
for unexclusive applicability of investment function to reputed trademarks..It is argued, this
may be theoretical conjecture,.as Mühlendahl outlines,65 the Court makes investment
infringement contingent upon origin infringement.66 Thus,.it is submitted,.this further
highlights,.the ground may be theoretically radical,67 but evidentially does not broaden
practical infringement for proprietors, as “confusion”68 must still be determined. Thus,
although the ground arguably further differentiates between reputed and non-reputed
protection,.for such not to be conjectural,.the Art.5.(1)(b)69 origin test must be satisfied.
However,.it is argued,.if such is,.origin will then be infringed and a proprietor will have
recourse, making this new function practically unnecessary..Thus, judicial clarification is
required, to determine this function’s independence.
57 (n 8).at.[para.64]: “[adaptation of ]efforts to acquire and maintain reputation” and that
consumers may switch [to the advertiser]”.
58Richard Wish and David Bailey, ‘Competition Law’ (9th edn, Oxford 2018) at.[p.24].
59 Susy Frankel and Daniel Gervais, ‘The Internet and the Emerging Importance of New Forms of
Intellectual Property’ (Vol 37, Wolters Kluwer 2016).
60 Note: This is further highlighted as of particular concern due to the fact trademark law is
legislatively homogenized between Member States unlike copyright.
61 Interflora Inc & Anor v Marks & Spencer Plc & Anor [2013] EWHC 1291 (Ch).
62 L’Oreal SA v Bellure NV (C-487/07) [2009] E.C.R.I-5185.
63 ibid.at.[Para.30].
64 (n 8).at.[Para 64].
65 Alexander von Mühlendahl, Dimitris Botis, Spyros Maniatis, Imogen Wiseman, Trade Mark Law
in Europe, (3rd edn, Oxford University Press, 2016).
66 (n 8).at.[Para 64].
67 (n 42).
68 (n 8).at.[Para 66].
69 (n 28).
6
3.2.Article.5(2) – Not.as.Revolutionary.as.First.Thought?
The interpretation of Art.5(2)70 was “ highly…anticipated”71 as previous keyword decisions
had not involved such..The Court for the first time outlined,.proprietors of reputed trademarks
are entitled to prevent competitors advertising on the basis of a keyword corresponding to the
trademark,.where the competitor takes unfair advantage of,.or dilutes, the mark’s
distinctiveness without “due cause”.72 Further,.the Court clarified,.Art.5(2)73 was “not
conditional upon…confusion”.74 Although,.it is acknowledged,this suggests a lower
threshold for reputed infringement,.it is argued,.the Court under the following two headings
limited Art.5(2)’s75 apparent breathe considerably.
Dilution – Diluted.to.Glorified.Origin.Function.Infringement?
It is submitted,.in the Court’s “three.interpretations”76 of dilution,.a finding of Art.5(2)77
infringement is contingent upon the “ user”78 being unable to determine the origin of the
advertised goods..As Fhima outlines,79 it is argued,.this test is akin to that under Art.5(1)(b)80
to show adverse effect on origin..Thus,.it is contended,.the Court’s attestation that no
confusion exists under Art.5(2)81 is questionable,.as the practical effect of the decision,.in
70 (n 15).
71 (n 8).at.[Paras 76 -83]. See further, Jonathan Cornthwaite, 'Say It With Flowers: The Judgement
Of The Court Of Justice Of The European Union In Interflora V Marks & Spencer' (2012) 6 European
Intellectual Property Review
72(n 8).at.[Para 70].
73 (n 15).
74 (n 8).at.[Para 71].
75 (n 15).
76 Christopher Morcom, ‘Trade Marks and the Internet: Where are Now?’, 2012, European
Intellectual Property Law Review.
77 (n 15).
78 (n 25).
79 Andrej Savin, Research Handbook On EU Internet Law (1st edn, Edward Elgar Publishing 2014),
Chapter 6, Ilanah Simon Fhima, ‘Trademark Law and Advertising Keywords’ .at.[p.143].
80 (n 28).
81 (n 15).
7
contradicting previous jurisprudence,82 conflates requirements under Art.5(1)(b)83 with
Art.5(2),84 thus,.arguably going so far as Mühlendahl outlines,85 to question dilution as an
independent ground..It is submitted,.the requirement of origin confusion,.is exacerbated as
the Court outlines, “the selection of a sign…identical…to a trademark…does not
necessarily”86 lead to dilution,.with the Court continuing in explaining if the “ user”87 can
adduce from the advertisements that the goods are competitor’s “alternatives”,88 dilution has
not occurred..It is submitted,.the practical effect is significant,.as it demonstrates the Court
not realistically providing reputed trademarks additional protection as Art.5(2)89 presupposes,
by reading “deception.theory” 90 into an Article91 designed to uphold “property.rights”.92
Further,.although it is noted,.the Court confirmed Art.5.(2)93 dilution does not require the
process to have ended94 and one would be forgiven in contending such is favourable for
reputed trademark proprietors..It is argued,.not only would deeming such be contingent on
confusion,.but this also suffers from the same vagueness,.as effect to reputation acquirement
in infringing investment function,.with again no guidance given,.with much evidential
discretion on the referring Court.
Nevertheless,.it is noted,.the Court’s policy is laudable in protecting consumer choice to
allow competition in recognition of the likelihood that reputed proprietors hold market
dominance,.in reducing risks of monopolistic conduct being justified upon Art.5(2).95
However,.it is argued,.the approach taken, in contestably undermining Art.5(2)96 trademark
82 Case C-251/95 Sabel BV v Puma AG, Rudolf DasleR Sport [1997] ECR I-6191at.[Para 20],
Adidas -Soloman and Adidas Benelux v Fitness-World [2003] ECR I-2537 at.[Para 57].
83 (n 28).
84 (n 15).
85 Alexander von Mühlendahl, Dimitris Botis, Spyros Maniatis, Imogen Wiseman, Trade Mark Law
in Europe, (3rd edn, Oxford University Press, 2016).
86 (n 8).at.[Para.80].
87 (n 25).
88 (n 7).at.[Para 81].
89 (n 15)
90 See further, Tobias Cohen Jehoram, ‘The Function Theory in European Trade Mark Law and the
Holistic Approach of the CJEU’, (2012) 102 Trademark Reports 1243, Luis H. Porangaba, ‘A
Contextual Account of the Trade Mark Functions Theory’ (2018) Intellectual Property Quarterly.
91 (n 14)
92 Glen Gibbons, ‘Trade Marks Law’, (2nd edn, Clarus Press, 2016).at.[Chp.7].
93 (n 15).
94 (n 8).at.[Para 77].
95 (n 15).
96 (n 15).
8
infringement independence,.fails to give due weight to reputation and the expense expended
in creating such.
Unfair.Advantage – Saving.Fair.Competition.Post.-.L’Oreal?
The Court held,.in the absence of “due cause”,97 the selection of a competitor’s reputed
trademark takes unfair advantage when the advertiser does such to benefit from the
reputation without proprietor remuneration.98 Further,.the Court outlines,.this is particularly
likely when “imitations”99 are offered.
It is argued,.this aspect of the ruling is particularly significant,.as subsequent to L’Oreal v
Bellure100 in acknowledging unfair advantage was an independent claim,.a “particularly
wide”101 concept was held,.in deeming any advantage derived from reputed trademark use
would be unfair if the proprietor was not remunerated..It is noted,.this was a significant
impediment on fair competition. 102 However,.the instant decision does not allow such
“automatic unfair advantage”103 in being the expositional decision to examine “due
cause”104 under Art.5(2),105 in outlining if “alternatives”106 are offered,.and as long as
dilution or tarnishment are not cause,.and it does not adversely effect functions,.“due
cause”107 is satisfied and no infringement occurs.
97 (n 8).at.[Para 93].
98 (n 8).at.[Para 89].
99 (n 8).at.[Para 90].
100 (n 62).
101 Ryan Baker, ‘Bidding on Trademarked Keywords in Search Engines: A Trademark Law
Update’, 2013, Washington Journal of Law, Technology and Arts, [8]5
102 See, (n 8).at.[para 84-85] where the Court outlines keyword advertising would automatically fall
under unfair advantage under this approach. See further, Alice Blythe, ‘Attempting to Define Unfair
Advantage: An Evaluation of the Current Law in Light of the Recent European Decisions’, 2012,
European Intellectual Property Journal.
103 Simon Fhima, ‘Dilution by Blurring – A Conceptual Roadmap’ Interlectual Property Quarterly
2010, [44], 46-47.
104 Ed, ‘Case Comment: ECJ Examines Use of Competitor’s Mark as Keywords for Internet
Searches’, EU Focus, 2011.
105 (n 15).
106 (n 8).at.[Para. 93].
107 (n 8).at.[Para. 93].
9
It is argued,.this not only limits L’Oreal108 in making unfair advantage contingent on other
criteria,.but more importantly limits the consequences that could have occurred,.in promoting
fair competition and being again cognisant that reputed trademark rights can be
monopolistically abused..However,.it is noted,.in further imputing function criteria109 into
Art.5(2),110 it may be argued the decision is again limiting Art.5(2)111 invocation within the
confines of establishing confusion in conflating Art.5(2)112 and Art.5(1)(b) ,113 and favouring
“deception theory”114 over “property.theory,”115 in undermining reputed rights..However,.it is
noted, in the broad ambit,.the balance struck in limiting L’Oreal116 is favourable for the
continued prosperity of the internet market.
4.0.Conclusion – A.Balanced.Decision.in.Maintaining.Fair.Competition.and.Consumer
Choice.or.A.Purely.Unprincipled.“Holistic”117 Policy.Decision.to.Save.the.Adwords
Revenue.Stream? A.Need.for.Legislative.Intervention?
It is argued Interflora118 and Google.France119 represent CJEU policy,.to “insulate” 120 search
engines from keyword infringement,.but allow the possibility of advertiser liability..It is
submitted,.as evidenced throughout,.taking a law and economics perspective, this policy
encapsulates a desire for effective competition within the internet marketplace,.contingent
upon search engines being able to provide this forum without liability “chill.effects”.121.
108 (n 62).
109 (n 8).at.[Para. 93].
110 (n 15).
111 (n 15).
112 (n 15).
113 (n 28).
114 Opinion of Advocate General Jääskinen, 24 March 2011, Case C-323/09, at.[Para.35].
115 William Cornish, David Llewelyn and Taya Alpin, ‘Intellectual Property: Patents, Copyright,
Trade Marks and Allied Rights’ (8th edn, Thomson Reuters 2013).
116 (n 62).
117 See further, Tobias Cohen Jehoram, ‘The Function Theory in European Trade Mark Law and
the Holistic Approach of the CJEU’, (2012) 102 Trademark Reports 1243, Luis H. Porangaba, ‘A
Contextual Account of the Trade Mark Functions Theory’ (2018) Intellectual Property Quarterly.
118 Interflora Inc & Anor v Marks & Spencer Plc & Anor (Case C-323/09)[2011]
119 Google France Sarl v Louis Vuitton Malletier SA (C-236/08) [2011] Bus.L.R.1.
120 It is noted, such is exacerbated by the Court’s response to referral Question 4(b) in stating: “the
fact that the search engine does not permit trade mark proprietors ….to block selection of signs
identical to their trade marks as keywords is not relevant to analysis”. See further, Andrej
Savin, Research Handbook On EU Internet Law (1st edn, Edward Elgar Publishing 2014), Chapter 6,
Ilanah Simon Fhima, ‘Trademark Law and Advertising Keywords’ at.[p.143].
121 Nicholas Mercuro, ‘Law and Economics: Critical Concepts in Law’, (3RD edn, Routledge,
2007).
10
Furthermore,.although as noted,.advertiser liability is possible,.and the instant decision
broadens the origin function in outlining advertiser duties..It is submitted,.continuing
imputation of confusion into Art.5(1)(a),122 and in exposition interpreting such in Art.5(2),123
the Court has made Type I124 and Type III125 infringement more difficult to invoke.
Thus,.it is argued,.to instil competition,.the Court has stretched teleological interpretation by
an unprincipled degree, in favour of the consumer and advertiser,.but at the expense of
trademark proprietor’s invocation of inherent property rights,.in turn,.questioning the
coherence of Directive 89/104.126 Further,.the decision’s fundamental impact as a
consequence appears to be purely theoretical,.rather than a clearly reasoned ratio that can be
applied in practice. Thus,.it is submitted,.to reflect modern circumstance legislative
intervention should be promoted,127 however,.this may be in vain considering European
Parliament ambivalence.128
122 (n 14).
123 (n 15).
124 (n 14).
125 (n 15).
126 (n 2).
127 Note: All the contentions that have been expressed throughout this case note are in advance of
the retrial of the UK High Court’s post reference hearing as ordered by the UK Court of Appeal. Thus,
depending on how that decision is decided, contentions herein may change, however it is argued the
current state of the law supports the pronouncement made throughout.
128 Original Note: As an aside, it is submitted the CJEU’s policy in not holding search engines
liable is particularly advantageous for the Irish economy. This is submitted, as outlined in Marie
Lamensch, ‘Value Added Tax and the Digital Economy: the 2015 EU rules and broader issues’ (1st
edn, Kluwer Law International, 2016), the main revenue stream for search engines is keyword
advertising. Thus, as the Irish economy benefits from many search engine tax revenues as a
consequence of the BEPS IP substance initiative, the continued prosperity of search engines is vital to
Irish economic prosperity. Thus, it is argued this is a spin off impact of the decision at hand in making
it difficult to hold advertisers liable and thus, not inhibiting the search engine’s revenue stream.
11
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