21.11.2009 |
EN |
Official Journal of the European Union |
C 282/19 |
Reference for a preliminary ruling from High Court of Justice (England and Wales), Chancery Division, made on 12 August 2009 — Interflora Inc, Interflora British Unit v Marks & Spencer plc, Flowers Direct Online Limited
(Case C-323/09)
2009/C 282/37
Language of the case: English
Referring court
High Court of Justice (England and Wales), Chancery Division
Parties to the main proceedings
Applicants: Interflora Inc, Interflora British Unit
Defendants: Marks & Spencer plc, Flowers Direct Online Limited
Questions referred
1. |
Where a trader which is a competitor of the proprietor of a registered trade mark and which sells goods and provides services identical to those covered by the trade mark via its website (i) selects a sign which is identical (in accordance with the Court's ruling in Case C-291/00) with the trade mark as a keyword for a search engine operator's sponsored link service, (ii) nominates the sign as a keyword, (iii) associates the sign with the URL of its website, (iv) sets the cost per click that it will pay in relation to that keyword, (v) schedules the timing of the display of the sponsored link and (vi) uses the sign in business correspondence relating to the invoicing and payment of fees or the management of its account with the search engine operator, but the sponsored link does not itself include the sign or any similar sign, do any or all of these acts constitute ‘use’ of the sign by the competitor within the meaning of Article 5(l)(a) of First Council Directive 89/104/EEC (1) of 21 December 1988 (‘the Trade Marks Directive’) and Article 9(l)(a) of Council Regulation 40/94 (2) of 20 December 1993 on the Community trade mark (‘the CTM Regulation’)? |
2. |
Is any such use ‘in relation to’ goods and services identical to those for which the trade mark is registered within the meaning of Article 5(l)(a) of the Trade Marks Directive and Article 9(l)(a) of the CTM Regulation? |
3. |
Does any such use fall within the scope of either or both of:
|
4. |
Does it make any difference to the answer to question 3 above if:
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5. |
Where the search engine operator (i) presents a sign which is identical (in accordance with the Court's ruling in Case C-291/00) with a registered trade mark to a user within search bars located at the top and bottom of search pages that contain a sponsored link to the website of the competitor referred to in question 1 above, (ii) presents the sign to the user within the summary of the search results, (iii) presents the sign to the user by way of an alternative suggestion when the user has entered a similar sign in the search engine, (iv) presents a search results page to the user containing the competitor's sponsored link in response to the entering by the user of the sign and (v) adopts the user's use of the sign by presenting the user with search results pages containing the competitor's sponsored link, but the sponsored link does not itself include the sign or any similar sign, do any or all of these acts constitute ‘use’ of the sign by the search engine operator within the meaning of Article 5(l)(a) of the Trade Marks Directive and Article 9(l)(a) of the CTM Regulation? |
6. |
Is any such use ‘in relation to’ goods and services identical to those for which the trade mark is registered within the meaning of Article 5(l)(a) of the Trade Marks Directive and Article 9(l)(a) of the CTM Regulation? |
7. |
Does any such use fall within the scope of either or both of:
|
8. |
Does it make any difference to the answer to question 7 above if:
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9. |
If any such use does fall within the scope of either or both of Article 5(l)(a) of the Trade Marks Directive/Article 9(l)(a) of the CTM Regulation and Article 5(2) of the Trade Marks Directive/Article 9(l)(c) of the CTM Regulation:
|
10. |
If the answer to question 9 above is that the use does not consist exclusively of activities falling within the scope of one or more of Articles 12-14 of the Ecommerce Directive, may the competitor be held jointly liable for the acts of infringement of the search engine operator by virtue of national law on accessory liability? |
(1) First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks
OJ L 40, p. 1
(2) OJ L 11, p. 1
(3) OJ L 178, p. 1