Lush defeats Amazon in trademark battle

Cosmetics company Lush has defeated online retailer Amazon in a trademark battle at the UK High Court.

In a judgment released today, February 10, UK-based Lush was successful in convincing the court that Amazon had infringed its trademark by returning results for the term ‘Lush’ in its search function despite not selling any Lush products.

In August last year, WIPR exclusively reported that Lush had filed a complaint. The case reached court in December.

“When people get to Amazon’s site and search for Lush, they are shown a competitor’s product. This, on a website designed for speedy transactions, can lead to customers mistaking other company’s products as being from Lush,” the company said at the time.

Issuing the judgment, deputy judge John Baldwin said although simply returning results for the word ‘Lush’ could not be counted as direct infringement, Amazon produced a drop-down menu when a consumer typed in the first two letters of ‘Lush’ which generated suggestions of similar products.

“In the case of a consumer clicking on '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 wrote.

Lush also claimed that, through the use of Google AdWords, a person searching for "Lush bath products" would be redirected to the Amazon website where they would be shown alternative products.

Judge Baldwin found the average consumer would generally be unable to ascertain that the goods shown in Amazon’s search results were "not the goods of or connected with" Lush.

Baldwin wrote that the use by Amazon of the Lush word “clearly damages the origin function and the advertising and investment functions of the Lush trademark.”

Baldwin added: “The right of the public to access technological developments does not allow a trader such as Amazon to ride rough shod over IP rights, to treat trademarks such as Lush as no more than a generic indication of a class of goods in which the consumer might have an interest”.

The case has similarities with the Interflora v Marks & Spencer High Court ruling in May last year.

There, Mr Justice Arnold found that retailer Marks & Spencer’s’ use of ‘Interflora’ Google AdWords that produced search results for its flower delivery services did infringe trademarks belonging to an existing flower delivery company of the same name.

Originally set-up in 1994, Lush now operates more than 800 stores in 51 countries. It produces and sells handmade cosmetic products, including soaps, shower gels and shampoos.

Simon Chapman, partner at Lewis Silkin LLP, which represented Lush, said the judgment provided “much needed clarity” on exactly how far third parties can go in their use of trademarks to generate "sponsored advertisements or direct web-traffic for commercial gain" unrelated to the trademark owner.

“There is no doubt that many online retailers will need to reconsider their approach with regards to the promotion of and marketing activity in support of alternative products to ensure they do not fall foul of today’s important precedent,” Chapman added.

Chris McLeod, first vice president at ITMA and director of trademarks at Squire Sanders LLP, said the judgment did "not go as far" as Lush may have wished, in that typing Lush into a search engine was not deemed infringement.

“I wonder though on considering the limits of the judgment whether it is equitable to allow a trademark to be used in the manner deemed permissible in the context of the search engine [just typing in Lush].

“For example, if the average consumer went into Boots and said ‘do you have any LUSH bath bombs?’ and was told ‘No, but we do have Bloggo bath bombs’, the consumer could then consider whether to buy those instead or continue to look elsewhere.

“The analogous position here is arguably that as soon as the average consumer thinks 'I want to buy LUSH bath bombs', the Boots assistant directs them to Bloggo bath bombs without any indication that they are not connected with Lush.

"It is therefore arguable that an artificial distinction is being drawn between the unsophisticated average consumer in person and the more savvy average consumer online."

Karl Bygrave, director of regulatory affairs at Lush, said the case was not only about Amazon using its trademark but also about its customers.

“In just the same way that Amazon prides itself on being innovative, so do we. We have built worldwide recognition in our trademarks and patented products so that our customers know when they are buying Lush products.

“We will always protect our name,” Bygrave added.

Amazon did not respond to requests to comment.