The Authors' Take - Justifications for reconsidering initial interest confusion after Interflora

Justifications for reconsidering initial interest confusion after Interflora

by Alexandra Allen-Franks

In Interflora v Marks & Spencer, the Court of Appeal rejected initial interest confusion as a concept relevant to trade mark infringement claims, calling it “highly controversial” and “an unnecessary and potentially misleading gloss” on the Court of Justice of the European Union’s tests for trade mark infringement. However, Interflora should not be considered the final word on the relevance of initial interest confusion for three reasons.

First, the alleged controversy surrounding initial interest confusion largely concerned its use in the US to find infringement without there being a likelihood of confusion present. However, by the time of Interflora, this controversy had been ameliorated by a change in approach taken by some US appeals courts which insisted on a likelihood of confusion. This brought the reality of initial interest confusion in the US closer to the position advocated for by critics of the doctrine but was not recognised in Interflora.

Further, initial interest confusion reasoning was familiar in England and Wales under the Saville Perfumery v June Perfect approach to trade mark infringement. Under Saville, distinguishing material “outside” the defendant’s mark was to be disregarded when assessing a likelihood of confusion. This meant that material that might remedy a consumer’s initial interest confusion was irrelevant, and it is therefore wrong to treat initial interest confusion as a US concept (although the terminology does originate there).

Finally, the tests that Interflora stated should apply to the facts of that case (following the CJEU) were an application of initial interest confusion despite the Court’s rejection of the concept. This is because in Interflora, the Court was only concerned with whether a likelihood of confusion existed at a particular point in time, the possibility of such confusion being remedied later being irrelevant (in an approach somewhat akin to Saville’s ignoring of extraneous material).

[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP).]