Interfolra Inc v Marks & Spencer and those Google Ad Words

This case is one of a number which have concerned the much publicised Google Ad Words. These Ad Words are an advertising service whereby an advertiser purchases certain words – which if then typed into the search engine will cause that advertisers link to appear as a sponsored link on the Google page. Many advertisers could purchase the same word and a bidding war could thereafter ensue because the highest bidder will be at the top of the queue and therefore attract a greater degree of exposure to potential customers, than those in a lower position.

Marks & Spencer (M&S) sought to have a claim bought buy Interfolra stayed pending the result of the six references to the European Court of Justice(ECJ).

The claim bought by Interfolra was for trade mark infringement in relation to certain Google Ad words.

M&S had purchased Interfolra and many other similar words and upon discovering this Interfolra sought redress through articles 5(1)(a) and 5(2) of Directive 89/104 (which is transposed into the law of England and Wales in the Trade Mark Act 1994).

M&S pushed for a stay on the proceedings until the clarification of the other six cases has been decided. Interfolra argued that the stay should be conditional upon M&S being stopped from bidding on the Interfolra name during the course of the stay.

The court held that the six cases which were pending at the ECJ were factually dissimilar from this case before them, so the court made a reference to the ECJ. The court also held that M&S were not required to stop bidding on the keywords when the proceedings were stayed – as this would in substance amount to an interim injunction which the facts did not justify.

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