September 6, 2015
LUSH brought trade mark infringement proceedings against Amazon, which does not sell any LUSH products, for buying the keyword “lush” within the Google Adwords service so that users searching for that term would see adverts for Amazon.co.uk, featuring terms such as “lush soap”. Users who clicked on the advert would be directed to the Amazon website and shown equivalent products from suppliers other than LUSH. It was not made clear to the users that those products were not LUSH products or that Amazon did not in fact sell any LUSH products.
Similarly, Amazon’s own search feature would suggest the word “lush” if users typed in any of the letters in that word and LUSH appeared in the list of brands shown in the search refinement feature on the website.
The court held that the Amazon advertisements which expressly referred to the word “lush” infringed Article 5(1) of the Trade Marks Directive, which provides that the owner of a registered trade mark may prevent third parties from using any sign which is identical to the trade mark in respect of goods which are identical to those for which the mark is registered.
The court also held that the use of the mark in search results on Amazon’s own website also infringed Article 5(1) since it amounted to use in the course of trade in relation to identical goods. The court found that this affected the origin, advertisement and investment functions of the mark.
The court held that adverts which appeared when users searched for the word “lush” but did not actually contain that word did not infringe the trade mark. Neither did the appearance of Lush in the brand listing on Amazon, as that related to goods which were branded as “Lush”, which fell outside of the LUSH trade mark.
Comment – The law relating to the use and exploitation of trade marks on the internet is still developing and this case is a significant step forward in clarifying the rights of the trade mark owner. The decision that the use of the word “lush” in the advertisements is an infringement is perhaps to be expected, given that it is a direct use of another retailer’s trade mark in order to advertise identical cosmetic and toiletry products. Nevertheless, the judge made interesting comments on the origin, investment and advertisement functions of the trade mark. For example, he said that the ‘origin’ of the trade mark was affected because the use of the word by Amazon, together with the context in which it arose (users searching for that term on Google), would lead consumers to believe that they were being shown LUSH products when they were not.
Also, in relation to the ‘investment’ function, the judge commented that LUSH had invested significantly in the reputation of its brand as an ethical one and that its decision not to sell on Amazon was related to that brand image. Therefore, Amazon’s use of the word may lead to an association between the two which might deter consumers. The senior manager who gave evidence on behalf of Amazon admitted himself that recent stories regarding Amazon’s attitude towards taxation might be regarded as “repugnant”.
More interesting is the finding of infringement in relation to the “suggested search” function on Amazon’s own website. Amazon argued that this feature was driven by consumer activity. So, for example, a user who types in “lu” in the health & beauty department will have the term “lush” suggested as that is what other users have searched for in the past. Amazon said that preventing these natural processes would remove the consumer’s control over the search process and restrict competition but the judge did not agree. He stated that the right of consumer access to technological development (i.e. the smart search function) could not allow Amazon to “ride rough shod over intellectual property rights, to treat marks such as LUSH as no more than a generic indication of a class of goods to which a consumer might have an interest.”
Finally, the judge confirmed that Google ads which promoted non-Lush goods when users searched for LUSH products but which did NOT feature the term “lush”, did not infringe the trade mark. He commented that users would expect to see adverts for competing products and Amazon’s advertising in this regard was legitimate.
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