Amazon and trade mark infringementPrint publication
Lush, the manufacturers and suppliers of cosmetics and soaps and the proprietor of the Community trade mark LUSH, has successfully claimed against the online retailer Amazon for trade mark infringement.
The essence of the claim in Cosmetic Warriors Limited v Amazon.Co.UK Limited  was that if a consumer were to type in the word “Lush” into the search box on Amazon, the search results would bring up a list of products that were not Lush products but which were products that Amazon hoped would interest a consumer searching for Lush products. The case also concerned Amazon’s use of the search term “Lush” in Google’s Adwords service, Amazon having bid on the “lush” keyword so as to trigger a sponsored link advertisement on the Google results page whenever a consumer typed “lush” into the search box.
The High Court held that Amazon infringed the LUSH mark by using “Lush” as a keyword within the Google AdWords service to trigger advertisements for the Amazon site, which included references to “Lush”. The court considered that the average consumer, seeing the advertisement would expect to find Lush products on the Amazon site. In fact, Lush products were not available on the Amazon site.
The court, however, did not accept that sponsored link advertisements triggered by search terms containing the word “Lush”, which did not show the LUSH mark but simply references to equivalent or similar products, were infringing as, in the court’s view, consumers were accustomed to seeing sponsored advertisements from competitors in the Google sponsored links.
Regarding the use of the LUSH mark to generate search results from within Amazon’s own search feature, the court found this constituted trade mark infringement. It held, first, that Amazon had used the LUSH mark in the course of a trade in connection with the relevant class of goods since it had used the sign as a commercial communication that it was selling goods on its website. It further held that Amazon’s use of the mark affected the origin, advertisement and investment functions of the mark.
On the origin function of the mark, the judge said that he did not think that the average consumer would ascertain without difficulty that the goods to which he or she was directed when typing in “Lush” (in fact typing in “Lu” was sufficient to bring up the search results) did not originate from Lush. The absence of any reference to LUSH on the display of the goods themselves did not affect that finding, since the consumer’s initial expectation would be that the products were Lush products, given the use of the Lush name in the search engine and the nature of the search results.
Regarding the advertisement function of the LUSH mark, the judge considered that this too would be damaged. Lush used its LUSH mark as a badge of origin to attract custom, and the Court held that this would be affected by Amazon’s use of the LUSH mark to attempt to sell third-party products.
Finally, regarding the investment function of the mark, Lush had established a reputation for ethical trading and indeed had decided not to sell products through Amazon because of a perception that to do so might prejudice that reputation. Therefore, it was held that the investment function would also be affected by Amazon’s use of the LUSH mark.
The decision will be of concern to anyone whose business model, like Amazon’s, relies, in part, upon the use of their own search engine and which uses a third party’s trade mark as a search term to direct consumers to alternative products that might be of interest to them.
An argument advanced by Amazon was that intellectual property rights should not be allowed to unduly interfere with technological development. The judge dealt with this robustly, stating: “this right of the public to access technological development does not go so far as to allow a trader such as Amazon 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 the consumer might have an interest.”
The decision will also be of interest to those using Google AdWords to trigger sponsored advertisements and they may derive some comfort from the fact that, so long as the advertisements did not contain the LUSH mark, the court found that there was no infringement, the judge recognising that by now consumers are used to sponsored ads from competitors.
  EWHC 181 (Ch)