The referral comes in a dispute between Interflora and Marks & Spencer, in which a judgment was given on Friday. Google is not a party to these proceedings.
Interflora complained that retailer Marks & Spencer, which also operates a flower delivery service, bought a large number of keywords in Google’s AdWords programme that were identical or similar to, or incorporated, its Interflora trade mark and domain name.
These included Interflora, Intaflora, Interflora Flowers, Interflora Online, Interflora UK and Inter Flora.
Each keyword triggered the display of a sponsored link to M&S Flowers Online, which (at the time of the hearing on March 27) appeared in the second highest position in the sponsored links page, behind Interflora’s own sponsored link.
Interflora claims that its advertising costs increased by about $750,000 between May 5 2008 and May 5 2009, and that it has lost sales as a result of M&S’s acts.
The parties dispute whether the purchase of the AdWords amounts to use of the trade marks in commerce, which would be prohibited under the Trade Marks Directive.
Although questions over AdWords have already been referred to the ECJ in a number of cases, Mr Justice Arnold said a further referral was justified: “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.”
In addition, he noted that European-wide law on AdWords may have to be amplified or qualified in relation to the UK and Ireland, as Google has a different policy in those countries since May last year.
Under that policy, Google no longer blocks keywords that are registered as trade marks. Google says it will extend that policy to nearly 200 countries (but not other EU members) from June 4 this year.
In his judgment, Arnold also declined to stop M&S bidding on the disputed keywords while the referral is pending, saying that such a prohibition would amount to an interim injunction, which he argues is not justified.
Arnold invited the parties to another hearing to decide the questions to be referred, and suggested they review his contemporaneous judgment in L’Oréal v eBay before doing so. That ruling also raised the issue of sponsored links.
Interflora was represented by barrister Simon Malynicz and law firm Pinsent Masons and Marks and Spencer by barrister Emma Himsworth instructed by law firm Osborne Clarke.
