Lush result…..for Lush

Posted: 26/02/2014

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What’s happened?

Lush, the ethical high street cosmetics company, made a conscious decision to prevent its products from being available for sale on the Amazon retail website, as it was critical of Amazon’s business ethics.

Lush is the owner of a Community Trade Mark for ‘LUSH’ which entitles it to prevent others from using anything identical or similar. When Lush discovered that Amazon had purposefully pursued the LUSH brand and the LUSH mark, it wanted to put a stop to it.

What the court said

Lush’s claims in court were three fold:

• Amazon was using Lush as a keyword within the Google AdWords service to trigger advertisements linking to similar (but not Lush) products on the Amazon site. These products on the Amazon site included references to the term Lush (ie 'Lush soap').

Any Amazon advertisements using the keyword Lush were deemed to be infringing the LUSH mark. The judge gave consideration to the average consumer seeing the Amazon Google Ad and their reaction to it. He thought that the average consumer would think that Amazon was a reliable LUSH retailer, when it was not.

• Amazon had sponsored link advertisements on Google which linked to the Amazon website. These adverts were triggered by search terms containing LUSH. These did not show the LUSH mark but did reference equivalent or similar products.

The court held that this form of advertisement did not infringe the LUSH trade mark, as the average consumer would be used to receiving sponsored links from competing suppliers.

This differed from the recent case of Interflora v Marks & Spencer (2013) in which it was held that an advert which referred to ‘M & S Flowers Online’ (when a consumer typed INTERFLORA into Google) and not to Interflora was an infringement, as Interflora was a network of flower shops and the average consumer may not be aware that M & S was not a member.

• On the Amazon UK website a search of the term LUSH brought up various search results of equivalent products, without indicating that LUSH products were not available on the Amazon site.

It was held that this amounted to trade mark infringement. Amazon was using the LUSH mark in the course of trade on the relevant goods. It was deemed that this was an attempt by Amazon to aid the sales by Amazon of non-Lush cosmetics. The judge held that the average consumer would think that these related search items were being presented by Amazon in order to be helpful to the consumer in finding Lush products.

Why this matters

• The court has again given great consideration to the ‘average consumer’ and their reactions in the online retail market. In this case, it is important to note that the judge did not underestimate the ability of the consumer to understand, and even expect, some of the competitive advertising tactics used by businesses online.
• It is now slightly more unclear what happens when competitors use your brand as an AdWord or in a sponsored link.  The INTERFLORA case had provided some clarity, but this judgment blurs matters, as it is not guaranteed that use of your brand for online advertising by a competitor will amount to trade mark infringement.  Every case may well turn on its own facts.
• This case does however remind brand owners of the importance and power of trade mark registration in protecting their brand against third party abuse and infringement. Amazon was found liable for infringement despite the ruling regarding sponsored links.

What this means for retailers

• This decision re-iterates the fact that it is unlawful to purchase and use keywords identical to a third party’s registered trade marks, where the customer is not easily able to tell whether or not the products originate from the brand owner.
• Use of an online search facility (like Amazon UK’s), which, in response to a search by a customer, suggests the names of branded products that are not in fact stocked but link through to competing products, is unlawful. This aspect of Amazon UK’s business model may well be altered in the coming months.
• Online retailers need to be more careful about the ‘suggestions’ their site makes to competing brands or products.

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