Interflora v M & S: Another AdWord referral to ECJ

"This is another case about Google AdWords and registered trade marks". This is the opening sentence of the England and Wales High Court's decision on an interim injunction in Interflora, Inc. Interflora British Unit v Marks and Spencer PLC Flowers Direct Online Limited, [2009] EWHC 1095 (Ch). The decision can be retrieved by clicking here.

The claimant, Interflora which operates the largest flower delivery network in the world, had filed a interim injunction to stop Marks and Spencer (M & S) and others from using 'Interflora' as a sponsored Google Adword search term, as well as the misspellings 'Intaflora' and 'Inter-flora'. M & S also operates a flower delivery service via its website which enables orders to be placed online.

The High Court did not grant an interim injunction and, as so many other national courts before, Mr Justice Arnold decided to refer the "Adword" matter to the European Court of Justice.

While the actual questions are still outstanding, (para 104 "I think it is right that the parties should have the opportunity to consider my judgment in L'Oréal v eBay, which is being handed down at the same time as this judgment, before finally committing themselves.") Mr Justice Arnold's reasons for a referral are set out in paragraphs 93 pp:

93 In the particular circumstances of this case, I concluded that the better course was to refer questions to the Court of Justice now, for the following reasons. It is common ground between the parties that guidance from the ECJ will at some point be necessary to enable this court to resolve the dispute. That being so, if I could be reasonably confident that all the necessary guidance from the ECJ would be forthcoming in its judgments on one or more of the existing references, then it might well make sense for to me to do as M & S urge and stay the proceedings until sufficient guidance is available: compare Johns v Solent SD Ltd [2008] EWCA Civ 790 and Boehringer Ingelheim KG v Swingward Ltd [2008] EWCA Civ 83, [2008] ETMR 36. For the reasons given by counsel for Interflora, however, I consider that there is at least a real possibility that the rulings by the ECJ on the existing references will not clearly resolve all the issues of law which arise in the present case. A further factor which supports this conclusion is the risk that one or more of the existing references may be withdrawn as a result of settlements. I also note that the Bundesgerichtshof considered it appropriate to make a further reference notwithstanding the references which had already been made.

96 Thus the choice comes down to making a reference now or leaving it to the trial judge to make a reference. The advantages of making a reference now are that it will reduce the delay in resolving this dispute and that it may obviate the need for trial altogether or at least reduce the scope of the trial. The main disadvantage of making a reference now is that the facts have not been fully determined. I am satisfied, however, that the factual situation is sufficiently clearly defined to enable the questions of law which arise to be posed and answered.

99 I should add that an additional factor which I have taken into account in reaching this conclusion is that I have decided to refer questions to the ECJ for a preliminary ruling in L'Oréal SA v eBay".