Lush cleans up in trade mark infringement action

The High Court recently issued its decision on a trade mark dispute between UK cosmetics company Lush and online marketplace Amazon.  The dispute centred on the alleged use of the LUSH trade mark by Amazon, both as a Google AdWord and as a search term on Amazon’s own website.

Lush manufactures and supplies handmade cosmetics and toiletries under the mark LUSH.  The company does not allow its products to be sold through the Amazon website, citing ethical reasons.  Lush owns a Community trade mark registration for the mark LUSH in respect of cosmetics and toiletries, and claimed that Amazon’s use of the LUSH mark constituted infringement of its registration.

Lush complained of three distinct uses of its trade mark by Amazon.  The first two concerned Amazon's use of the mark LUSH in keyword advertising.  Amazon had successfully bid on various keywords containing the term “lush” within the Google AdWords service.  As a result, when a consumer typed “lush” into the Google search engine, a sponsored link advertisement would often appear on the search results page.  If a consumer clicked on the advertisement, he would be directed to the Amazon UK website and presented with a range of products similar to those sold by Lush.  There was no overt reference on the Amazon website to the fact that Lush products are not sold through Amazon.

The first set of advertisements contained several uses of the LUSH mark, including wording such as "Lush Soap at Amazon".  John Baldwin QC, sitting as Deputy Judge, held that the average consumer seeing the sponsored advertisement would not expect Amazon to be advertising Lush products for purchase if they were not available through its website, and consumers were therefore likely to expect to find Lush products available on the Amazon site on the basis of the advertisement.  The judge held that Lush had successfully established infringement of its LUSH trade mark.

Lush failed, however, in its second claim.  In the second set of advertisements, there was no mention of the LUSH mark, but the adverts did refer to products such as bath bombs and other products similar to those sold by Lush and available from the Amazon website.  The judge held that consumers are familiar with sponsored advertisements and are used to seeing such adverts from competing suppliers.  Moreover, consumers would expect an advertisement for Lush products to include some reference to the LUSH mark.  As such, the average consumer could not reasonably fail to appreciate that the Amazon advert was from a supplier offering similar/alternative products.

The third type of use complained of by Lush related to searches conducted on Amazon's own website.  As a consequence of entering "Lush" into the search box on the Amazon site, consumers would be presented with a range of products similar to those available from Lush.  Furthermore, if a consumer entered only the letters "LU-" into the search box in a relevant department of the Amazon site (such as the "Beauty", "Health" or "Personal Care" departments), a drop down menu would offer suggested search terms such as "lush bath bombs" or "lush cosmetics".  Clicking on such terms would again produce a range of products similar to those offered by Lush.  Like the sponsored link advertisements, there was no overt reference on the Amazon website to the fact that Lush products are not sold through Amazon.

In relation to this third type of use, the judge held that, although Amazon cannot be held liable for a consumer typing "Lush" into its search function, the fact that consumers would then be presented with suggested alternative search terms such as "lush bath bombs" was likely to lead consumers to believe that they could buy Lush products through the Amazon website.  Furthermore, given that there was no overt indication that Lush products are not available for purchase through Amazon, the average consumer would not ascertain without difficulty that the goods to which he was directed did not originate from Lush.  In addition, the judge held that Amazon was using the LUSH trade mark as a generic indicator of a class of goods, and that this was liable to damage the mark's ability to act as a guarantee of origin.  Lush therefore succeeded in its third claim.

The case helps to clarify the extent to which third parties may use other parties' trade marks in keyword advertising, and/or to direct consumers to alternative/competing products.  It remains to be seen whether the decision will have a practical effect on such practices, though online retailers and key word advertisers would be well-advised to be cautious of using other parties’ trade marks in such ways.

Laurie Smith, Trade Mark Attorney