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The Lush v Amazon dispute, continued

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01/07/2014

In our April newsletter, we reported that Lush had succeeded in its action against Amazon, preventing the latter from using its trade mark to promote rival goods for sale on Amazon’s website and via Google. The High Court ruled that Amazon had infringed Lush’s trade mark by suggesting to users of its internal search engine, and in sponsored search results, that Lush goods were offered for sale on its site when they weren’t.

Following the ruling the two companies attempted – and failed – to reach an agreement as to the form of the court order. Accordingly, the form of the order was referred back to the High Court for a ruling. Before the High Court, Lush sought a general form of injunction against infringement while Amazon argued that the scope of the injunctive relief owed to Lush should be limited to certain uses of the Lush mark. In particular, Amazon argued that it was “technically difficult” for Amazon to avoid infringing Lush’s rights because of the way it designed its software. For instance, Amazon maintained that it did not quite know how to prevent its web page from reproducing the word Lush above the offering of a range of products competitive to Lush products. The Court was not persuaded that Amazon lacked the technical know-how to comply with a general form of injunction and, accordingly, that was what the court ordered.

Regarding the territorial scope of the injunction, Amazon argued that this should be confined to the UK. The court held that as the infringement related to a Community trade mark, the injunction should be EU-wide.

The court also ordered Amazon to publish a notice on its website, by way of a link to the judgment, for one month. This was in relation to all pages which returned a response in return to the search term “Lush”. However, the court did acknowledge that the case had attracted considerable publicity so did not require Amazon to publish anything in the national press. It also agreed to a stay regarding the publicity order, pending any appeal to the Court of Appeal.