Lush loses trademark battle with food manufacturer
Lush Cosmetics has lost a trademark dispute after its opposition to a mark applied for by food manufacturer Tasty Snacks was denied.
In a decision by the UK Intellectual Property Office ( IPO) on Friday, December 14, the registrar ruled that Tasty’s application for a red and gold mark, with the word ‘lush’ in white letters, for “snacks consisting of mixtures of nuts; crisps” can proceed to registration.
The application to register the mark, which was filed on May 6, was opposed by Lush, which said it infringed two of the company’s trademarks for products including perfumes, bath preparations, lotions, powders, shampoos, soaps and creams.
In its argument, Lush said its marks “have a reputation in the UK and that Tasty’s new mark would cause the public to wrongly believe there is an economic connection between the two companies”.
The cosmetics retailer cited its “carefully developed” reputation for “fresh, handmade and ethically produced goods”, which it said would give Tasty an unfair advantage.
Lush stated that its success was largely due to its refusal to compromise on its principles: its products have never been tested on animals, are 100% vegetarian and the company regularly campaigns for ethical buying and against animal testing.
Lush argued that by assuming a link between the two companies, consumers would have an expectation that Tasty’s goods should meet the same ethical standards of Lush’s products. It said “this will cause a detriment to Lush’s reputation through confusion”. Articles from national press showing involvement in animal and human rights issues were also entered as evidence.
Tasty initially issued a counterstatement denying this claim, but later accepted that the average consumer would make a link.
Lush alleged that its natural products would be tarnished by Tasty’s mark, which would be perceived by consumers as unhealthy, of dubious origin and containing additives and synthetic ingredients. It also argued snack foods are associated with low-cost, mass produced products without concern for ethics, animal welfare or the environment.
In the IPO’s ruling, the registrar concluded that the link between Lush’s trademarks and Tasty’s application is “not strong” as the “goods do not coincide in nature, purpose, channels of trade or method of use”. It said there “may be a very superficial overlap in consumers, but the goods are different”.
The registrar also said Lush’s allegation of “inferior quality is hypothetical and insufficient” and it is not likely that the applied-for mark will have a negative effect on earlier marks, nor will there be any detriment to the reputation of Lush’s trademarks.
It added that it was “not persuaded that Tasty would gain an advantage through the use of its proposed mark”, concluding that “there is a world of a difference between including edible ingredients in toiletries and the manufacture of foodstuffs”.
Tasty’s application will now proceed to registration.
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