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Wednesday, 5 November 2014

BREAKING NEWS: Interflora appeal allowed, initial interest dissed

The trade mark infringement action brought by Interflora against Marks & Spencer for use of its INTERFLORA trade mark as a keyword has been a regular source of content and comment on this weblog.  

The original action is Interflora, Inc., Interflora British Unit v Marks and Spencer PLC Flowers Direct Online Limited, [2009] EWHC 1095 (Ch), 22 May 2009. Arnold J's decision here is noted by the IPKat here. The learned judge decided to refer a number of questions to the Court of Justice of the European Union (CJEU) for a preliminary ruling.

In November 2009 we knew what the questions were -- all 10 of them, noted by the IPKat here.

By late April 2010, following some correspondence with the CJEU's registry, the 10 questions had been reduced to just four (see Spring pruning for Interflora questions).

On 22 September 2011, the CJEU delivered its ruling, reported by the IPKat here.

After the CJEU's ruling, things became increasingly lively.

[2012] EWCA Civ 1501 (a.k.a. Interflora I) was a Court of Appeal decision of 7 November 2012 on the question whether a trade mark proprietor should be allowed to call the evidence of witnesses identified by means of a witness gathering exercise, where the proprietor does not intend to rely on the survey or questionnaire by means of which the witnesses were identified. This ruling led to Arnold J granting Interflora permission to adduce in evidence the witness statements of 13 such witnesses in [2013] EWHC 273 (Ch)

The Advocate General's ruling came on 21 March 20111 in Case C-323/09, 21 March 2011, noted by the IPKat here.

Next came "the latest battle in a long war of attrition" (per Lord Justice Lewison), a.k.a. Interflora II, which you can find at [2013] EWCA Civ 319, 5 April 2013, noted by the IPKat here. The Court of Appeal here determined that Arnold J's decision to grant permission was based on a flawed exercise of discretion, inviting him to re-exercise it.

Then, on 21 May 2013, Arnold J delivered one of his characteristically Arnoldian epics at [2013] EWHC 1291 (Ch), noted here on 23 May 2013, consisting of no fewer than 326 paragraphs. Conclude the judge: "M & S has infringed the Trade Marks under Article 5(1)(a) of the Directive and Article 9(1)(a) of the Regulation".

Today, the Court of Appeal for England and Wales (Lords Justices Patten and Kitchin and Sir Colin Rimer) at [2014] EWCA Civ 1403, this being an appeal against Arnold J's decision in [2013] EWHC 1291 (Ch). The judgment of the court was delivered by Kitchin LJ. The result (at para 198) is this:
"We have ... come to the conclusion that the appeal must be allowed and the case remitted to the High Court for retrial of the claims for infringement under Article 5(1)(a) of the Directive (as implemented in section 10(1) of the Trade Marks Act 1994) and Article 9(1)(a) of the Regulation".
The court also had some harsh words for the doctrine of initial interest confusion, describing it as "unnecessary" and "potentially misleading".

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A full analysis will be brought to you soon, via the Annsley the AmeriKat.

1 comment:

Anonymous said...

From an overview reading, this criticism of initial interest confusion appears to be aimed at cases involved a) keyword advertising and b) identical marks.
It will be interesting to see if the Och Ziff test and comments remain reliable as good law for confusingly similar marks and for issues not involving keyword advertising. In my view, it has useful applications in some instances, perhaps as a natural extension of 'indirect confusion.'

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