UK: Lush Smells Success In Keyword Infringement Battle

Last Updated: 7 August 2014
Article by Robert Cumming

Just as a tree grows and blossoms with age, so too do principles of law.  That is clearly apparent from the latest High Court judgment in Cosmetic Warriors Ltd and Lush Ltd v Amazon.co.uk Ltd and Amazon EU Sarl [2014] EWHC 181 (Ch) in which the cosmetics and toiletries brand sought to prevent the use of LUSH in online advertisements by the retailer.

Up until 2010, the only oasis of guidance in a barren legal landscape on the use of keywords was the English Court of Appeal's 2004 judgment in Reed v Reed ([2004] R.P.C. 40).  That case established that consumers were aware that online search results had "much rubbish thrown in" and that, unless there was evidence of direct confusion, it would be difficult for a claimant to succeed. Now, four years after the first shoots appeared in the Court of Justice's decision in LVMH v Google France (iPit post here), we have a rich thicket of European jurisprudence (see iPit summary here) which provides a solid framework for assessing liability.  Every case is unique to its facts but the principles have now taken deep root.

The English High Court's judgment in Lush v Amazon is the latest to consider the circumstances in which the use of a third party's trade mark is justified and when, on the contrary, it will infringe.  It is based heavily on the guidance given by the Court of Justice of the European Union in Google France, L'Oreal v eBay (iPit post here) and Interflora (iPit post here) but also considers "auto-complete" functions and the use of consumers' search terms within a retailer's website.  

Lush is the owner of certain trade mark registrations for the sign LUSH in respect of cosmetics and toiletries, such as Community trade mark number 1388313.   Crucially, it does not sell its products through Amazon's retail platform because it saw a difference between its standards of environmental and ethical concerns and those which it attributes to Amazon.  

Winning the battle for the moral high ground is much more challenging however, given Lush's application to register as a trade mark the name of Amazon's Managing Director, a move the court described as "bizarre".

Lush's claim against Amazon

Lush complained that the world's largest online retailer damaged the origin function, the advertisement function and the investment function of its marks when it:

i) purchased the keyword LUSH so that third party search engine results pages (such as those on Google) would display advertisements which used the word LUSH in relation to cosmetics

ii) purchased the keyword LUSH so that third party search engine results pages would display generic advertisements in relation to cosmetics

iii) used the word LUSH in results pages generated by Amazon's search engine embodied in its website (example shown below)

In the European Union, the test for infringement under Article 5(1)(a) of Directive 2008/95/EC and the interpreting case law requires:

  1. use in the course of trade;
  2. of an identical sign;
  3. in the relevant territory;
  4. in relation to identical goods or services for which the mark is registered;
  5. without the consent of the proprietor; and
  6. the use must be liable to have an effect on one of the functions of the trade mark

(see Holterhoff v Freiesleben ( Case C-2/00), Arsenal v Reed ( Case C-206/01), Celine ( Case C-17/06), O2 v Hutchison 3G ( Case C-533/06).

The court also noted the requirement laid down in Article 6 of Directive 2000/31 (the E-Commerce Directive) that the identity of the person making an electronic commercial communication must be made clear.  

It is against this backdrop that the court considered whether Amazon's advertisements would:

enable reasonably well informed and reasonably observant internet users, or enables them only with difficulty to ascertain whether the goods or services referred to by the advertisement originate from [Lush]... or on the contrary, originate from [an unconnected] third party

In short, if consumers were able to appreciate that Amazon's advertisements and search engine results did not relate to Lush's products then there would be no infringement.  That depended on the average consumer's perception of Amazon's retail business as well as the content of the advertisement and the context in which they appeared.

Did Amazon infringe the Lush trade marks?

Deputy Judge Mr John Baldwin QC found that:

i) Amazon did infringe when advertisements were triggered in search engine results pages which used the term LUSH because consumers would expect to see Lush products on the Amazon website;

ii) Amazon did not infringe when generic advertisements were triggered in search engine results pages because consumers are familiar with sponsored advertisements appearing from competitors;

iii) Amazon did infringe by providing an "auto-complete" function for LUSH within the search facility embodied in its website because the consumer's expectation is that the items displayed are Lush products

In reaching his decision, the Deputy Judge recognised the role Amazon's services played in allowing consumers to enjoy the benefits of technology.  However, that right

does not go so far as to allow a trader... to ride rough shod over intellectual property rights, to treat trade marks such as Lush as no more than a generic indication of a class of goods in which a consumer might have an interest.

He placed a strong emphasis on the fact that Amazon's results pages did not show a "No results found" but rather simply showed items which were alternatives but which in his view were not clearly indicated as alternatives.  The consequence was that consumers were left with the overall impression that the products displayed originated from the brandowner displayed on the page.

So where does that leave us?

In conclusion, businesses can still bid on competitors' keywords.  However, if the context and content of any search engine results page and advertisement mean that there is any doubt as to the origin of the goods or services there is likely to be infringement.  In making that assessment, the consumer's perception of the brand and the retailer will be highly significant.

Brand names are more important online than they are in the physical world 

~ Jeff Bezos, founder of Amazon, 1997 ( http://www.inc.com/magazine/19970901/1314.html)

Also published at  http://www.appleyardlees.com/lush-smells-success-in-keyword-infringement-battle/ and in the ITMA Review

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.