LUSH wins trade mark battle with Amazon, in more ways than one
Cosmetics brand LUSH has won its High Court infringement action against Amazon.co.uk following unauthorised use of LUSH’s trade marks as search engine keywords. We recently reported on the Court of Appeal’s decision in Interflora v Marks & Spencer (M&S) where the Court ruled that M&S’s use of Interflora’s trade mark as a search engine keyword constituted trade mark infringement (see our website www.capitallaw.co.uk for our past articles).
A similar issue has now come before the High Court in the case of LUSH v Amazon.co.uk. LUSH manufactures and supplies cosmetics and owns a Community Trade Mark (CTM) for 'Lush' in respect of toiletries and cosmetics. Amazon.co.uk (Amazon) supplies many similar products, however no genuine LUSH products are available through the Amazon site. Despite this, Amazon had bid on ‘lush’ as a Google AdWord meaning that consumers who searched the word ‘lush’ on Google were presented with a sponsored link to Amazon’s site in their search results. Amazon had also configured the search facility on their own website so that searches for ‘lush’ presented products similar to those made by LUSH.
However, crucially neither the Google nor the Amazon search results made clear that the products available on Amazon were not genuine LUSH products. The Court examined Amazon’s use of LUSH’s CTM in both scenarios and found that the CTM had been infringed. This was because, on the facts, the average consumer would not be able, without difficulty, to ascertain that the goods presented by Amazon were not genuine LUSH goods. The court therefore found in LUSH’s favour.
This case is interesting as it demonstrates the approach judges are taking to the use of third-party trade marks in online marketing. Given the lucrative nature of keyword advertising this line of cases could have a significant impact on e-commerce practices across Europe.
This case is also interesting from a branding perspective. It has been reported that LUSH’s founders had asked Amazon to settle the issue out of court up to 17 times before the trial, but to no avail. Now, in retaliation to what LUSH’s founders reputedly saw as bullying from Amazon, LUSH has taken the creative step to register “Christopher North”, the name of Amazon.co.uk’s managing director, as a trade mark and have used it to market a new shower smoothie bearing the tagline “rich, thick and full of it”. Although originally intended as a joke product, LUSH co-founder Mark Constantine has confirmed that if Amazon do appeal the decision (as they have threatened) then the Christopher North Shower Smoothie, which is adorned with comical jabs at Amazon's controversial tax strategy, could go on sale, with all proceeds being donated to good causes.
We have previously written about brand management in the emerging world of social media (see our previous article here (see our website www.capitallaw.co.uk for our past articles) and this case reinforces the notion that businesses should consider all aspects of brand management before engaging in high profile trading disputes, especially ones involving allegations of bullying.
The ball is now in Amazon’s court. It remains to be seen how they will react to LUSH’s latest registration, but apparently Mark Constantine has already taken the precaution of registering his own name as a trade mark to prevent Amazon from retaliating in kind.