Amazon Bombs: Lush Successful Against Amazon in Keyword Advertising Case
26 June 2014
Lush is a well-known manufacturer and supplier of cosmetic products, primarily under the LUSH brand. Amazon, the world’s largest online shopping retailer, used Lush’s trade mark, LUSH, as a Google Adword and as a part of the search function on its UK website. Due to Amazon’s use of LUSH in keyword searches, customers were directed to similar products on Amazon’s website, e.g. cosmetic gift sets. These were not Lush products and Amazon did not highlight this fact.
The UK High Court found that Amazon’s use of LUSH in its search results, both on Google and on its own website, amounted to trade mark infringement as it damaged the origin, advertisement and investment functions of Lush’s trade mark.
The fact that Amazon did not refer to LUSH in conjunction with the products for sale on its website did not provide it with a valid defence.
In particular, the Court said that consumers were unlikely to expect, after having searched for the term LUSH and being directed to the Amazon website, Amazon to be advertising Lush products for purchase if they were not available for sale. Indeed, Amazon directed consumers to other products similar to those offered by Lush. This, as the Court noted, amounts to using the Lush trade mark as a generic indicator of a class of goods, e.g. cosmetic products, which attacks the ability of Lush’s trade mark to act as a guarantee that goods advertised under this mark originate from Lush. This is inherently linked to the function of a trade mark to act as a badge of origin and as an advertising tool for brand owners.
Interestingly, this is the first time that the Court had considered the impact of the investment function of a trade mark in great detail. Lush has built up an image of ethical trading and this is something that it opted to preserve by not allowing its goods to be sold by Amazon. It had apparently taken this decision as a result of Amazon’s attitude towards tax avoidance. The court decided that Lush was entitled to prevent any damage to its reputation that may arise by being associated with Amazon.
Following from the M&S v Interflora decision from 2013, this case demonstrates the dangers of using the trade marks of a third party as a part of keyword advertising and internet search result generation.
It also highlights that brand owners may be given an added layer of protection where their brand is associated with particular characteristics, for example ethical trading. Such an image is a result of the investment in the trade mark and the reputation that it has developed in the market. This is very useful for brand owners who take the time and effort to enhance their brand in a way that allows it to develop certain associations, in this case ethical and environmentally friendly trading.
Trade Mark Group
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© Withers & Rogers LLP, June 2014