Spring pruning for Interflora questions

Way back in November, before the Court of Justice of the European Union had given its ruling in the Google AdWords case, Mr Justice Arnold contrived to ask a mammoth list of no fewer than ten questions of that Court, in the Chancery Division (England and Wales) dispute between trade mark owner Interflora and ever-so-cheeky AdWord purchaser and retail giant Marks & Spencer. The cause of war in this instance was the fact that, when people who wanted to find Interflora via a search engine and keyed in that term, they would be confronted with a list of sponsored advertisements, led by Marks & Spencer.

Now that, following its rulings in Google AdWord and Bergspechte, we now know a lot more about trade mark infringement and trade mark use on the internet than we did last November, the Registry of the Court of Justice has written to Mr Justice Arnold and asked him, in rather more formal terms, "do you still want an answer to all your questions and, if so, can you please clarify Questions 3(b) and 9?".

For the record, Question 3(b) asks whether the complained-of use falls within the scope of Article 5(2) of the Trade Marks Directive and Article 9(1)(c) of the CTM Regulation (assuming that such use is detrimental to the distinctive character of the trade mark or takes unfair advantage of the repute of the trade mark). Question 9 asks whether, if such use does fall within the scope of either or both of Article 5(1)(a) of the Trade Marks Directive/Article 9(1)(a) of the CTM Regulation and Article 5(2) of the Trade Marks Directive/Article 9(1)(c) of the CTM Regulation,

"(a) does such use consist of or include 'the transmission in a communication network of information provided by a receipt of the service', and if so does the search engine operator 'select or modify the information', within the meaning of Article 12(1) of ... Directive 2000/31 ... ('the E-Commerce Directive')?

(b) does such use consist of or include 'the automatic, intermediate and temporary storage of information, performed for the sole purpose of making more efficient the information's onward transmission to other recipients of the service upon their request' within the meaning of Article 13(1) of the E-Commerce Directive?

(c) does such use consist of or include 'the storage of information provided by a recipient of the service' within the meaning of Article 14(1) of the E-Commerce Directive?

(d) if the use does not consist exclusively of activities falling within the scope of one or more of Article 12(1), 13(1) and 14(1) of the E-Commerce Directive, but includes such activities, is the search engine operator exempted from liability to the extent that the use consists of such activities and if so may damages or other financial remedies be granted in respect of such use to the extent that it is not exempted from liability?".

If indeed the reference was to stand, the Registry of the Court of Justice wanted to know as follows:

"- Does Question 3(b) seek to establish under which circumstances an advertiser which makes use, as an AdWord, of a sign identical to the well-known trade mark of a competitor must be regarded as acting in a manner detrimental to the distinctive character of that trade mark (dilution) and/or as taking unfair advantage of the distinctive character or repute of that trade mark (free-riding)?

- Does the introductory sentence of Question 9 ('If any such use does fall within the scope of either or both of Article 5(1)(a) of the Trade Marks Directive/Article 9(1)(a) of the [Community Trade Mark] Regulation and Article 5(2) of the Trade Marks Directive/Article 9(1)(c) of the [Community Trade Mark] Regulation') mean that, in view of the national court, Articles 12 to 14 of the E-Commerce Directive are of no relevance to the resolution of the case in the main proceedings if it is established that there is no 'use' within the meaning of Article 5 of the Trade Marks Directive and/or Article 9 of the Community Trade Mark Regulation, on the part of the search engine operator? Does the national court wish to retain that introductory sentence of Question 9, having regard, in particular, to paragraph 57 of the abovementioned judgment in Google France and Google?".

In Interflora Inc & another v Marks and Spencer Plc & another [2010] EWHC 925 (Ch) Arnold J held today that the Court of Justice's answers were still needed for questions 1 to 4,

"(1) Where a trader which is a competitor of the proprietor of a registered trade mark and which sells goods and provides services identical to those covered by the trade mark via its website (i) selects a sign which is identical (in accordance with the Court's ruling in Case C-291/00) with the trade mark as a keyword for a search engine operator's sponsored link service, (ii) nominates the sign as a keyword, (iii) associates the sign with the URL of its website, (iv) sets the cost per click that it will pay in relation to that keyword, (v) schedules the timing of the display of the sponsored link and (vi) uses the sign in business correspondence relating to the invoicing and payment of fees or the management of its account with the search engine operator, but the sponsored link does not itself include the sign or any similar sign, do any or all of these acts constitute 'use' of the sign by the competitor within the meaning of Article 5(1)(a) of ... the Trade Marks Directive and Article 9(1)(a) of ... the CTM Regulation?

(2) Is any such use 'in relation to' goods and services identical to those for which the trade mark is registered within the meaning of Article 5(1)(a) of the Trade Marks Directive and Article 9(1)(a) of the CTM Regulation?

(3) Does any such use fall within the scope of either or both of:
(a) Article 5(1)(a) of the Trade Marks Directive and Article 9(1)(a) of the CTM Regulation; and
(b) (assuming that such use is detrimental to the distinctive character of the trade mark or takes unfair advantage of the repute of the trade mark) Article 5(2) of the Trade Marks Directive and Article 9(1)(c) of the CTM Regulation?

(4) Does it make any difference to the answer to question 3 above if:
(a) the presentation of the competitor's sponsored link in response to a search by a user by means of the sign in question is liable to lead some members of the public to believe that the competitor is a member of the trade mark proprietor's commercial network contrary to the fact; or
(b) the search engine operator does not permit trade mark proprietors in the relevant Member State of the Community to block the selection of signs identical to their trade marks as keywords by other parties?"

Arnold J however qualified question 3(b) as follows, at para. 20:

"... I accept that it is desirable for this purpose to clarify question 3(b). My answer to the Court's request for clarification of that question is "yes": question 3(b) does seek to establish under which circumstances an advertiser which makes use, as an AdWord, of a sign identical to the well-known trade mark of a competitor must be regarded as acting in a manner detrimental to the distinctive character of that trade mark (dilution) and/or as taking unfair advantage of the distinctive character or repute of that trade mark (free-riding). As counsel for Marks & Spencer suggests, this clarification can be effected by simply deleting the parenthesis in question 3(b)".

The IPKat notes the warm welcome given at para.7 to the Registrar's request by the judge, who described the request for clarification as "a helpful step in the dialogue between the Court of Justice and the national courts", adding that, "if the questions referred do not sufficiently clearly articulate the points on which this court needs assistance from the Court of Justice, then this court should endeavour to make them clearer". However, the warm welcome was soon followed by a rap on the knuckles at paras 8-10:

"... I would have found it easier to respond constructively to the Court of Justice's request if the procedures of the Court of Justice were more transparent in certain respects. Apart from supplying a copy of its judgment in Google France, the Court of Justice did not provide any information to assist this Court to answer its request. In particular, it did not provide any information as to the status of the related references. Nor did it provide copies of any written observations filed by the parties, the Commission or the Member States.

... Because the Court of Justice no longer publishes Reports for Hearing and written observations are not publicly available, however, I do not know whether the Commission made the same or similar submissions in the Google France case. I therefore do not know whether the Court of Justice has already considered and rejected those submissions. If written observations were made publicly available in the way that, for example, briefs to the US Supreme Court are, this kind of problem would not arise.

I note that in his Opinion in Joined Cases C-514/07P, C-528/07P and C-532/07P ... Advocate General Poiares Maduro ... recommended that pleadings in closed cases should normally be accessible. If the Court of Justice were to follow that advice, it would be a step towards resolving difficulties of the kind mentioned above".

Bravo, says the IPKat! Merpel adds, if there is to be further cooperation and dialogue, can I put in a plea that the Court cooperates further by answering the questions posed by the national court rather than, as sometimes appears to happen, substituting its own?

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