Amazon is synonymous with online shopping – you might say it’s their bag (excuse the pun). Like all behemoths though, it doesn’t always receive the best of press. However, this case wasn’t so much predicated on bad press, rather a minnow (Lush Cosmetics) fighting back for infringement of their trademark.
The brand ‘Lush’ is well known in the UK, and prides itself on its integrity and ethos. It was because of these principles (and the legal point) that Lush commenced proceedings against Amazon for trademark infringement arising from Amazon’s use of the term ‘Lush’ on its website. It also alleged that Amazon had bid for Google Adwords ‘Lush Bath Products’, despite not selling any Lush products.
After hearing the parties, the High Court found in favour of Lush, confirming that their community trademark had been infringed. Whilst the case is complex, the Court determined for those advertisements where Amazon purchased and used Google Adwords using a sponsored link (triggered by searching the term ‘Lush’) showing the trademark in its ad there was a clear infringement. The Judge found that the average consumer couldn’t tell without difficulty that the goods to which it was directed were not those of Lush. However, Amazon’s use of the same keyword was not held to be an infringement where the term ‘Lush’ was not displayed in the ad. The Court also found that Amazon had infringed Lush’s trademark by the display of the term ‘Lush’ in its predictive search engine, despite Amazon’s arguments to the contrary. The use affected the origin, advertisement and investment functions of the trademark. As a final point, the Court determined that both Amazon.co.uk Ltd and Amazon EU SARL were both jointly liable, and the companies were not able to hide behind two separate legal entities.
The outcome of this case was always going to be of interest to businesses because of the increasing use of Google Adwords for online retailers. The takeaway for business owners is to ensure that keyword-linked ads do not contain a third party’s registered trademark. The case also emphasises the importance of brand protection and how it can be used to defend your business, when needed.
To read the full judgment follow this link