The High Court has ruled that Amazon was infringing Lush’s trademark by using “Lush” as a keyword in Google AdWords to trigger advertisements for Amazon which included references to “Lush”, such as “Lush soap”.
The court decided that an average consumer seeing the advertisement would expect to find Lush’s products on Amazon, when in fact it was not possible to buy Lush’s products on Amazon, which simply offered equivalent or similar products.
However, the court found that sponsored link advertisements in Google search triggered by search terms containing “Lush” which did not show the LUSH mark, but only references to equivalent or similar products such as ‘bath bombs’, did not infringe the LUSH trade mark, since consumers are used to seeing sponsored ads from competing suppliers.
The court also held that Amazon had infringed the LUSH mark through the use of “Lush” in search results when searching on Amazon itself for “Lush”, which directed consumers to similar or equivalent products, without indicating that Lush’s products were not actually available on Amazon. Consumers who entered ‘lu’ were offered a drop down box of suggestions including ‘lush bath bombs’ which they could click through to and purchase products that were not in fact made by Lush. The court found that the average consumer would not be able to ascertain, without difficulty, that the goods available on Amazon were not Lush products.
The court awarded an EU-wide injunction to prevent the infringements. The judge also ordered that Amazon should publish a notice, linking to the judgment, on its website for one month, although this publicity requirement may be appealed taking into account the fact that the decision had already attracted some publicity in the national press.
This case is of interest to advertisers, since (while each case will ultimately turn on its own specific facts) it suggests that, so long as keyword linked advertisements do not contain the third party’s trade mark, they will not infringe.
The judgment is also of interest, in particular regarding the extent to which search results generated on a company’s own website when a third party’s trade mark is searched for may infringe that trade mark. The findings on this point were of particular importance to Amazon, who argued that it went to the root of its business model and contended that Lush were seeking to remove the consumer control of the search process that Amazon’s search facility allowed.
The case reflects a clash of culture between Lush and Amazon. Lush claimed it had an image of ethical trading. It wished to preserve this image and, therefore, decided not to allow its goods to be sold on Amazon because of the damage that it perceived would be done to that reputation on the basis that some consumers regard Amazon’s attitude to, for example, UK taxation as repugnant.
The case is similar to Interflora v Marks & Spencer in which the High Court ruled that Marks & Spencer’s use of advertising keywords infringed Interflora’s trade marks although the decision in that case was in part because Interflora represented a network of flower shops and the average consumer might not appreciate that Marks & Spencer were not members of that network.
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