The High Court determines that Amazon's use of the trade mark LUSH in its sponsored advertisements and on its website constitutes trade mark infringement

Cosmetic Warriors Ltd and another v amazon.co.uk Ltd and another
[2014] EWHC 181 (Ch), 10 February 2014

Summary: The High Court held that Amazon infringed the LUSH trade mark by using 'Lush' in its Google sponsored advertisements and in its search facility on the Amazon website when it did not actually sell LUSH products.  

Key Practical Consequences:

  • Advertisers cannot use third party trade marks both as a keyword and in the related sponsored advertisements when the goods under the mark are not available for sale on their website.
  • Advertisers can use third party trade marks as a keyword so long as the resulting sponsored advertisements do not incorporate those marks. This is because consumers are familiar with sponsored ads from competitors.
  • Advertisers cannot use third party trade marks as a search term on their websites where the goods under those marks are not available for sale. Instead, they must make it clear that such goods are not available on their website.

Discussion:

The claimants were the manufacturers and suppliers of the popular LUSH brand of cosmetics (together, 'Lush'). Lush is the registered proprietor (and exclusive licensee) of the Community trade mark LUSH in respect of cosmetics, toiletries and soap. The defendants were companies within the Amazon group (together, 'Amazon'), the largest online shopping retailer in the world.

Lush decided not to allow the sale of its products on Amazon's website, as it had built up a reputation for ethical trading which it felt would be damaged by an association with Amazon.  Amazon nevertheless bid on Google AdWords which contained the word 'Lush' so that when users searched for Lush products on the Google search engine, it triggered Amazon sponsored advertisements. Amazon also used the keyword 'Lush' in its own search engine.

Lush alleged that Amazon had infringed its trade mark pursuant to Article 5(1)(a) of Directive 2008/95/EC (the 'Directive') which enables an owner of a trade mark to prevent third parties from using an identical sign, in the course of trade, in respect of goods or services which are identical to those for which the trade mark is registered.

The decision analysed three classes of alleged infringements of the LUSH trade mark.

The first class of infringements arose when Amazon had bid on the keyword 'Lush' in the Google AdWords service so that a sponsored link advertisement was triggered as a consequence of a consumer typing the word 'Lush' into the Google search engine. The 'Lush' mark was used within the resulting advertisements, for example "Lush Soap at Amazon.co.uk" and "Low prices on Lush Soap." Consumers clicking on the link were then taken to the Amazon website and presented with the opportunity to purchase similar products. There was no message within the advertisement or on the Amazon website that Lush products were not in fact for sale via Amazon.

The deputy judge held that Amazon's use of the LUSH mark as a keyword and in the sponsored advertisements, while not offering LUSH branded goods for sale on the Amazon website amounted to trade mark infringement. In particular, he determined that when the average consumer saw the sponsored link advertisement which included the LUSH mark, they would expect to find LUSH products available on the Amazon site.

The deputy judge noted that the average consumer is likely to consider Amazon to be a reliable supplier of a very wide range of goods, and would not expect Amazon to be advertising Lush soap for purchase if that were not the case. The deputy judge rejected Amazon's argument that the average consumer would, without difficulty, ascertain that the goods referred to by the advertisement were not the goods of, or connected, with Lush.

The second class of infringements arose when Amazon also used the Lush keyword to trigger sponsored link advertisements that did not feature the Lush mark, but would instead make references to similar products. For example a consumer searching for "Lush bath bomb" would trigger the advertisement "Bomb bath at Amazon.co.uk." Again, consumers clicking on the link were taken to the Amazon website where they could purchase similar products. There was no message to the effect that the Lush bath bomb was not available for purchase on the Amazon website.

The deputy judge held that Amazon's use of the LUSH mark as a keyword but not in the sponsored advertisements did not amount to trade mark infringement. In his opinion, the average consumer would be familiar with sponsored advertisements from competitor businesses, and accordingly would not be confused by seeing a sponsored advertisement from Amazon when using the Lush keyword. Further, he considered that average consumers would expect a Lush advertisement to make reference to the LUSH mark. 

The third class of infringements arose when Amazon used the keyword 'Lush' in the search facility on the Amazon website.  For example, if a consumer searched for the word 'Lush' in the 'Beauty' department, the letters 'lu' triggered a drop down menu (based on Amazon's analysis of prior consumers' behaviour on the Amazon website) and various options were offered such as 'lush bath bombs' and 'lush cosmetics'.  When a consumer clicked on 'lush bath bombs' or 'lush cosmetics', the new page would offer similar products to those available from Lush without any overt reference to the fact that Lush products were not available.

The deputy judge held that Amazon's use of the LUSH mark as a search term in its own website, despite not selling any LUSH branded products, amounted to trade mark infringement.

Amazon argued that its search engine went to the root of its business model, and that the public should not be hindered from accessing technological development. However, the deputy judge was of the opinion that the right of the public to access technological development did not allow a trader such as Amazon to ride roughshod over intellectual property rights, and to treat trade marks such as LUSH as no more than a generic indication of a class of goods in which the consumer might have an interest.

This decision is a significant development in the law of trade marks as they relate to the Internet.  The court has made it clear that use of a third party trade mark in the search engine of a website which does not offer the goods associated with that trade mark in the above circumstances will constitute infringement.

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.