Lush defeat Amazon in High Court Trademark battle – but were they expecting more?

Originally set-up in 1994, Lush produces and sells handmade cosmetic products, including soaps, shower gels and shampoos. Lush now impressively operate in 51 countries, boasting over 800 stores.

In a judgment released on February 10^th it was confirmed that the UK based company have been successful in their attempts in convincing the court that Amazon had infringed Lush’s trade mark by returning results for the term “Lush” in its search engine, despite not selling any Lush products.

The dispute can be traced back to August last year when WIPR reported that Lush had filed a complaint against Amazon. The case finally reached court in December 2013.

Lush reportedly stated that the major issue revolved around the fact that “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.”

You may remember a post late last year which discussed the issues surrounding the Interflora and Marks & Spencer case, where Mr Justice Arnold found that retailer Marks & Spencer’s’ use of ‘Interflora’ Google AdWords (which produced search results for its flower delivery services) did infringe trademarks belonging to an existing flower delivery company of the same name. For more information on this case visit: http://www.trademarkroom.com/trademarks-and-adwords/

Turning the focus back towards this case, Judge Baldwin found that the average consumer would generally be unable to ascertain that the good’s shown in Amazon’s search results were “not the goods of or connected with” Lush and for this reason Amazon’s use of the Lush word “clearly damages the origin function and the advertising and investment functions of the Lush trade mark”.

This judgment provides “much needed clarity” on exactly how far third parties can go in their use of trade marks to generate “sponsored advertisements or direct web-traffic for commercial gain” unrelated to the trademark owner. But did this judgment go as far as Lush had wished?

Chris McLeod, first vice president at ITMA and director of trademarks at Squire Sanders LLP, is of the opinion that Lush were not entirely satisfied with the results developed in the High Court. It is thought that Lush were perhaps hoping that just the mere action of typing Lush into a search engine would be deemed as an infringement. McLeod asked:

“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].”

He then went on to invent a scenario in an attempt to justify Lush’s viewpoint. He explained:

“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 more savvy average consumer online.”

Perhaps this scenario makes it slightly more understandable as to why Lush may feel ‘miffed’ by the decision.

Nonetheless, Karl Bygrave who is the director of Regulatory Affairs at Lush exerted a statement of defiance when the decision was announced, when he frankly asserted that:

“We will always protect our name”.

Harry Jeffries (Law Student)