By order dated 16 July 2009 I referred the following questions to the Court of Justice of the European Union under Article 234 EC, now Article 267 TFEU:

The background to the reference is set out in full in my judgment dated 22 May 2009 [2009] EWHC 1095 (Ch), [2009] ETMR 54. As discussed in that judgment, this is one of a considerable number of trade mark disputes concerning keyword advertising around Europe. In several of those cases questions had been referred to the Court of Justice concerning the interpretation of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (“the Trade Marks Directive”), now codified as European Parliament and Council Directive 2008/95/EC of 22 October 2008, and of corresponding provisions in Council Regulation 40/94 of 20 December 1993 on the Community trade mark, now codified as Council Regulation 207/2009/EC of 26 February 2009. For the reasons I gave in that judgment, I decided to refer questions as well. The reference was subsequently allocated case number C-323/09.

Since then the Court of Justice has delivered judgment on two of the earlier references. On 23 March 2010 the Grand Chamber of the Court of Justice gave judgment in Joined Cases C-236/08 to C-238/08 Google France SARL v Louis Vuitton Malletier SA [2010] ECR I-0000. On 25 March 2010 the First Chamber of the Court of Justice gave judgment in Case C-278/08 Die BergSpechte Outdoor Reisen und Alpinschule Edi Koblmüller GmbH v Günter Guni and trekking.at Reisen GmbH [2010] ECR I-0000.

In addition, I have been informed that the Court of Justice will give judgment in Case C-91/09 Eis.de GmbH v BBY Vertreibsgesellschaft mbH next week. Since there has not, so far as I am aware, been a hearing or an Advocate General’s Opinion in that case, I infer that the judgment will be by way of reasoned order. It appears that Case C-558/08 Portakabin Ltd v Primakabin BV is still pending. As I understand the position, there has been a hearing in that case, but the Advocate General’s Opinion is still awaited.

On 23 March 2010 the Registrar of the Court of Justice wrote to this Court to inform it that the Court had decided pursuant to Article 104(5) of the Rules of Procedure, to request clarification of the reference. The request is in the following terms:

The Court of Justice asked for a reply to its request by 30 April 2010 at the latest.

If I may say so, I regard the request for clarification as a helpful step in the dialogue between the Court of Justice and the national courts. As the request indicates, it is appropriate for this Court to take stock in the light of the Court of Justice’s judgment in Google France. Furthermore, if the questions referred do not sufficiently clearly articulate the points on which this Court needs assistance from the Court of Justice, then this Court should endeavour to make them clearer.

That said, I wish to record that I would have found it easier to respond constructively to the Court of Justice’s request if the procedures of the Court of Justice were more transparent in certain respects. Apart from supplying a copy of its judgment in Google France, the Court of Justice did not provide any information to assist this Court to answer its request. In particular, it did not provide any information as to the status of the related references. Nor did it provide copies of any written observations filed by the parties, the Commission or the Member States.

The parties have assisted me by providing the information about the related references set out in paragraph 4 above. They have also assisted me by supplying copies of the written observations that have been filed on the present reference. Counsel for Marks & Spencer drew particular attention to the submissions made by the European Commission in its observations, which he contended were significant for the reasons explained below. Because the Court of Justice no longer publishes Reports for Hearing and written observations are not publicly available, however, I do not know whether the Commission made the same or similar submissions in the Google France case. I therefore do not know whether the Court of Justice has already considered and rejected those submissions. If written observations were made publicly available in the way that, for example, briefs to the US Supreme Court are, this kind of problem would not arise.

I note that in his Opinion in Joined Cases C-514/07P, C-528/07P and C-532/07P Kingdom of Sweden v Association de la Presse Internationale ASBL Advocate General Poiares Maduro advised the Court of Justice to reverse the judgment of the Court of First Instance in Case T-36/04 [2007] ECR II-3201 regarding the right of access to pleadings lodged by the Commission in pending proceedings before the Court. In particular, he recommended that pleadings in closed cases should normally be accessible. If the Court of Justice were to follow that advice, it would be a step towards resolving difficulties of the kind mentioned above.

Interflora’s position is that, contrary to its previous expectations, the guidance given by the Court of Justice in its judgment in Google France is sufficient to enable this Court to deal with the present case. Accordingly, Interflora suggests that I should withdraw the reference. Marks & Spencer’s position is that the guidance given by the Court of Justice in its judgment in Google France is not sufficient to enable this Court to deal with the present case. Accordingly, Marks & Spencer suggests that I should maintain the reference at least so far as questions 1-4 are concerned.

It is convenient to begin with questions 5-10. Interflora accepts that:

It is clear from the judgment of the Court of Justice in Google France that the answer to question 5 is “no”: a search engine operator does not “use” the sign in question by such acts.

It follows that there can be no primary liability on the part of Google for trade mark infringement in the circumstances of the present case.

It also follows that Marks & Spencer cannot be jointly liable in respect of any acts of trade mark infringement by Google.

Therefore questions 6-10 do not arise.

In the light of Interflora’s acceptance of these matters, Marks & Spencer does not suggest that questions 5-10 need to be maintained.

Accordingly, I shall withdraw questions 5-10.

Counsel for Interflora submitted that it is clear from the judgment of the Court of Justice in Google France that:

The answer to questions 1 and 2 is “yes”.

The answer to question 3(a) is that such use is within the scope of Article 5(1)(a) if the use affects or is liable to affect one of the functions of the trade mark, in particular the origin function.

The answer to question 3(b) is “yes” on the assumption stated.

The answer to question 4(a) is yes, since in those circumstances the origin function is affected.

He also submitted that, although question 4(b) had not been answered by the judgment in Google France, it was no longer necessary for this question to be answered.

Counsel for Marks & Spencer submitted that it was still necessary for questions 1-4 to be answered. He concentrated in particular on question 3. In summary, he argued as follows. In the present state of the Court’s jurisprudence, liability for trade mark infringement under Article 5(1)(a) of the Trade Mark Directive depends critically on whether the impugned use of the sign affects or is liable to affect one of the functions of the trade mark. For inter alia the reasons given in my judgment in L’Oréal SA v eBay International AG [2009] EWHC 1094 (Ch), [2009] ETMR 53 at [283]-[306], it is unclear precisely what the content of this criterion is. Since the date of that judgment, the Court of Justice in Case C-487/07 L’Oréal SA v Bellure NV [2009] ECR I-0000 has held that an effect on any of the functions of the trade mark, and not just the origin function, is sufficient to sustain a claim under Article 5(1)(a): see in particular [58], [63] and [65]. This has done little to clarify (i) precisely what the functions of a trade mark are which may be affected by use of a sign, (ii) precisely what is required in order to establish that such functions are liable to be affected in order to found a claim under Article 5(1)(a) and (iii) what the relationship is between a claim under Article 5(1)(a) and a claim under Article 5(2) in a double identity case (i.e. identical mark/sign and identical goods/services). Accordingly, counsel for Marks & Spencer submitted that question 3 should be maintained. So far as question 3(b) is concerned, he submitted that in the light of subsequent events it would be of assistance to delete the parenthesis (i.e. “(assuming that such use is detrimental to the distinctive character of the trade mark or takes unfair advantage of the repute of the trade mark)”), which he suggested was in effect what the Court’s request for clarification amounted to.

In support of these submissions, counsel for Marks & Spencer prayed in aid the observations of the Commission on the present reference. In those observations the Commission expressed concern that the existing jurisprudence of the Court of Justice (in particular Case C-48/05 Adam Opel AG v Autec AG [2007] ECR I-1017 at [18]-[22], Case C-533/06 O2 Holdings Ltd v Hutchison 3G Ltd [2008] ECR I-4231 and L’Oréal v Bellure) might not have defined the precise scope of the exclusive rights of trade mark proprietors with the required degree of clarity, and suggested that the Court of Justice should take the opportunity presented by this reference to clarify these issues. Furthermore, the Commission suggested that the Court should reconsider its judgment in L’Oréal v Bellure. As I understand its observations, the Commission considers that Article 5(1)(a) is restricted to use which affects or is liable to affect the origin function of the trade mark, while use which only affects or is liable to affect other functions may only be prohibited under Article 5(2).

I note that the Commission’s observations post-date the Court of Justice’s judgment in L’Oréal v Bellure, but pre-date the Court of Justice’s judgment in Google France. If the Commission had made similar submissions in Google France, then one would probably have to conclude that they had been rejected by the Court of Justice: see the judgment at [75]-[79]. Given the sequence of events I have referred to, however, the Commission may not have made such submissions in that case. For the reasons explained above, I am uncertain as to whether the Commission did so or not. If the Commission did not make such submissions in that case, then I respectfully suggest that they merit consideration by the Court of Justice.

In these circumstances, I am not convinced that the judgment in Google France provides as much clarity on these issues as is desirable. I therefore consider that question 3 should be maintained. I accept that it is desirable for this purpose to clarify question 3(b). My answer to the Court’s request for clarification of that question is “yes”: question 3(b) does seek to establish under which circumstances an advertiser which makes use, as an AdWord, of a sign identical to the well-known trade mark of a competitor must be regarded as acting in a manner detrimental to the distinctive character of that trade mark (dilution) and/or as taking unfair advantage of the distinctive character or repute of that trade mark (free-riding). As counsel for Marks & Spencer suggests, this clarification can be effected by simply deleting the parenthesis in question 3(b).

On the assumption that question 3 is maintained, counsel for Marks & Spencer submitted that questions 1, 2 and 4 should be maintained as well. Although he was disposed to accept that it was clear from the judgment in Google France that some of the acts listed in question 1 amounted to “use” of the sign by the advertiser “in relation to” the relevant goods or services, he submitted that it was not clear whether all the acts listed amounted to “use”, or if so whether they were use “in relation” to the goods or services. As for question 4, he submitted that answers to these questions may help to elucidate the answer to question 3. I accept those submissions.

Accordingly, I will maintain questions 1-4 save that question 3(b) is clarified as set out in paragraph 20 above.