was much food for thought once again at the Fordham IP
Conference, held this year in Cambridge, UK, last week. It was
a particular pleasure to moderate once again a discussion on
recent trade mark developments in the EU, which covered
numerous recent cases as well as (in what was apparently a
first for Fordham) a presentation on passing off by Mr Justice
Charleton of the Supreme Court of Ireland.
It fell to Professor
Spyros Maniatis to summarise the Interflora
AdWords saga – he had roughly one minute for every
year of the litigation (and as the computer screen ticked down
to zero, I was counting every second).
Maniatis discussed the development of trade mark law on
keyword advertising in both the US and EU and then focused on
the grounds on which the Court of Appeal reversed
the first instance judge in Interflora and (highly
unusually) ordered a retrial.
These were (1) that the judge had wrongly held that the onus
of proving that there is no risk of confusion in cases such as
this lies on the third-party advertiser rather than the trade
mark owner, and (2) that he had introduced the "unnecessary and
potentially misleading gloss" of initial interest confusion
from US law.
It so happened (as is often the case at Fordham) that there
was someone intimately acquainted with the case in the second
row of the audience: on this occasion, Mr Justice Arnold, the
first instance judge whose opinion was overturned by the Court
In an intervention, Arnold commented on both the burden of
proof and initial interest confusion.
Regarding the former, he pointed to his recent decision in
Petfoods where he discussed in detail the CJEU case
law on infringement under Article 5(1)(a) of the Directive and
in particular the condition that the alleged infringing sign
"must affect, or be liable to affect, one of the functions of
the trade mark".
As he put it with typical understatement in that opinion,
this condition "gives rise to considerable difficulty in
understanding and applying the law". Despite a string of CJEU
cases, it is unclear who bears the burden of proving this
condition is met. Is it the trade mark owner, or the defendant,
or some combination of both, and does it depend on the type of
case or which function is affected?
Petfoods, Arnold (left) concluded that a CJEU reference
was clearly needed "preferably sooner rather than later" but
was not necessary in that particular case.
On the second point, regarding initial interest confusion,
Arnold was robust in the face of the Court of
Appeal’s criticism, noting that it is "an
inescapable fact" of European trade mark law (going back at
least to L’Oreal v eBay) that you can
infringe a trade mark merely by placing an advertisement.
As he argued: does that not amount a doctrine of initial
The Interflora baton has now been passed to Mr
Justice Birss (who gave a judgment
refusing an interim injunction in December last year). Both
parties still seem to have a hearty appetite for this
litigation (and, judging from some of the costs numbers
mentioned in court hearings, bottomless wallets). So further
developments are expected. (For a tongue-in-cheek illustration
of the ups and downs on this litigation so far, see our
Whether it’s in Interflora or another
case, it seems that these two questions will be heading to
Luxembourg for further clarification before too long.