Lush vs Amazon
Lush, the Claimants, are the manufacturers and suppliers of cosmetics under the Lush brand and registered proprietor for the trade mark LUSH in respect of cosmetics and toiletries in class 03.
Amazon, the Defendants, are part of an online shopping group which trades under the Amazon brand. Amazon sells via its website its own products as well as the products of third parties.
Lush issued a High Court claim complaining that if you search 'Lush' on Amazon's site you are directed to alternative cosmetic products and this amounts to infringement of the its trade mark.
In addition, Lush complained that Amazon’s use of 'Lush' as a Google AdWord, when Amazon does not sell any Lush products, was also an infringement.?
High Court Ruling
John Baldwin QC, sitting as a Deputy Judge, held that Lush had established infringement of its trade mark on the basis that Amazon had damaged the “origin function, advertising function and investment function” of the Lush trade mark after directing consumers to similar cosmetics on its site.
The court held that the “right of the public to access technological developments does not allow a trader such as Amazon to ride rough shod over intellectual property rights, to treat trade-marks such as Lush as no more than a generic indication of a class of goods in which the consumer might have an interest”.
Baldwin QC had found that the 'origin function' of Lush's trade mark had been infringed by Amazon's use of the mark in Google sponsored search results and in the 'suggestions' that the platform's own search engine had prompted users with.
Amazon had argued that competition rules and the "right of the public to access technological development" gave it the right to use Lush's mark to display others' goods for sale. However, the judge said that users searching for Lush goods would have expected to have been presented with the option of buying Lush-branded products and that it was not clear enough to users that Lush items were not available for sale on Amazon's site.
The judge also found that Amazon infringed the 'advertising function' of Lush's trade mark after first finding that Lush had built substantial reputation for health and beauty products. Amazon's use of the Lush mark to attract customers to buy non-Lush products was therefore infringing, he ruled.
Concerning the Investment function, although simply returning results for the word 'Lush' could not be deemed as a direct infringement, Amazon produced a drop down menu when a customer typed in the first 2 letters of 'Lush' which generated suggestions of similar products.
Baldwin QC said that "in the case of a consumer clicking on the 'Lush bath bombs' or 'Lush cosmetics' the new page will offer similar products to those available from Lush without any overt reference to the Lush item not being available". Baldwin QC held that the average consumer would generally be unable to ascertain that the good shown in Amazon's search results were "not the goods of or connected with" Lush.
The case is a cautionary tale for retailers promoting alternative products in relation to specific search terms. It helps brand owners to understand what a trade mark protects and when the use of a trade mark in online advertising will be unlawful.
It also adds to the recent slew of keyword cases and goes some way to clarify the extent to which third parties may use trade marks to generate sponsored advertisements within search engine results or within websites to direct web traffic to products which do not originate from the trade mark owner.
To avoid a claim of infringement key word advertisers should be cautious of using AdWords that could imply a financial link with a competitor unless there is a commercial justification for your business using such AdWords apart from attracting a competitor's potential customers.
Online retailers should also review the way in which they provide 'suggestions', and indeed the way that items are listed. In particular it should be made clear that, items shown as 'suggestions' do not necessarily emanate from the same proprietor.