Say it with flowers... But beware of keywords!

Following the CJEU decisions in Google v. Louis Vuitton and Interflora v. Marks & Spencer¹, the Paris High Court² recently confirmed that use of a third-party trademark as a Google AdWords keyword is lawful when there is no risk of consumer confusion about the origin of goods or services.

Florajet, a company which sells flowers online, purchased INTERFLORA as a keyword to advertise its goods and services on Google AdWords. Interflora considered that such use infringed its rights and brought an action for trademark infringement and unfair competition against Florajet.

There is no doubt that trademarks may be used as keywords as long as the advertising per se does not create confusion in the mind of the public

On 5 March 2015, dismissing all of Interflora’s claims as unfounded, the Paris High Court held that insufficient evidence had been provided to demonstrate that the trademark INTERFLORA had a reputation in the French market. However, even if such reputation could have been established, the trademark’s reputation was not sufficient alone to prohibit use of INTERFLORA as a keyword.

The court noted that such use could only result in trademark infringement where there was a likelihood of confusion as to the origin of the relevant goods or services on the part of the public. Here, the court acknowledged that there was no risk of confusion about the origin of the goods and services since the mark INTERFLORA was not displayed in the advertising text and Interflora did not provide any evidence that the public could be confused into thinking that the goods and services were offered by Interflora when the advertising text only referred to Florajet.

Although it is in line with CJEU case law, the decision issued by the court appears harsh. It ordered Interflora to pay damages for abusive proceedings for the following reasons:

• Interflora did not respect a well-established principle under French law according to which trademark infringement and unfair competition cannot be used cumulatively as separate causes of action in relation to the same facts.
• Interflora was claiming very high damages (nearly €6 million!).
• Interflora, which brought a similar action in front of the CJEU in Interflora v. Marks & Spencer, was aware of the extent of its rights and the merits of its claims, which the court considered to be very “fanciful”.

There is no doubt that trademarks may be used as keywords as long as the advertising per se does not create confusion in the mind of the public. However, more guidance from the court about the circumstances in which trademark infringement may be found where no use of the trademark is made in the advertising text itself would have been helpful.

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