Isn't it Lush?
Published: 26 March 2014
A recent high court case concerning ethical cosmetics company LUSH has clarified the law surrounding the use of registered trademarks in keyword advertising.
Lush is a brand which prides itself on its ethical image. It therefore made a conscious business decision not to offer LUSH branded products for sale via Amazon, as it considered that doing so would damage its "ethical" branding. Despite this Amazon had been using "LUSH" as a keyword in Google Adwords to direct traffic to its website. In addition, the search engine on Amazon’s own website provided prompts so that if a user typed "LUSH" into the search engine, suggestions such as "LUSH bath bombs" and "LUSH cosmetics" were offered as a choice for users to select.
The High Court held as follows:
- Sponsored ads, which were displayed when a user typed "LUSH" into Google such as "LUSH bath bombs at Amazon" were held to infringe LUSH’s trademark;
- Other sponsored ads which were displayed when "LUSH" was the search term input into Google which referred to cosmetics and products similar to LUSH branded products but did not refer to the LUSH trade mark (such as "bath bombs at Amazon") were held not to infringe LUSH’s trade mark This means that marketers can continue to use a competitor’s trade mark in their keyword advertising as long as they can show they are doing so without intending to deliberately cause confusion between the two competing products;
- Search results generated by the search engine on Amazon’s website were held to be an infringement. The High Court held that consumers could easily be confused into thinking they were buying genuine Lush products – not least because there was no notice stating that the search on the Amazon website for LUSH did not reveal any matches.
- All of the above uses constituted use of an identical trademark by Amazon (the "LUSH" trade mark) in the course of trade in relation to identical goods (toiletries and cosmetics), without Lush’s consent. The determining question as to infringement in relation to each type of use was whether the use was such as to affect or be liable to affect the functions of the trademark.
It will be interesting to see what Amazon decides to do in relation to this decision. In the meantime this case provides useful guidance on what does and does not constitute trademark infringement in relation to Google ad words and search engines generally.
For further information on trade marks and other intellectual property matters, please contact Tudor Alexander, who heads up our Commercial Department. For information on trade mark litigation or other High Court litigation please contact Jovita Vassallo in our Dispute Resolution Department.
The contents of this article are intended for general information purposes only and shall not be deemed to be, or constitute legal advice. We cannot accept responsibility for any loss as a result of acts or omissions taken in respect of this article.