Lush Smells Success In Keyword Infringement Battle

Just as a tree grows and blossoms with age, so too do principles of law. That is clearly apparent from the latest High Court judgment in Cosmetic Warriors Ltd and Lush Ltd v Amazon.co.uk Ltd and Amazon EU Sarl [2014] EWHC 181 (Ch) in which the cosmetics and toiletries brand sought to prevent the use of LUSH in online advertisements by the retailer.

Up until 2010, the only oasis of guidance in a barren legal landscape on the use of keywords was the English Court of Appeal's 2004 judgment in Reed v Reed ([2004] R.P.C. 40). That case established that consumers were aware that online search results had "much rubbish thrown in" and that, unless there was evidence of direct confusion, it would be difficult for a claimant to succeed. Now, four years after the first shoots appeared in the Court of Justice's decision in LVMH v Google France (iPit post here), we have a rich thicket of European jurisprudence (see iPit summary here) which provides a solid framework for assessing liability. Every case is unique to its facts but the principles have now taken deep root.

The English High Court's judgment in Lush v Amazon is the latest to consider the circumstances in which the use of a third party's trade mark is justified and when, on the contrary, it will infringe. It is based heavily on the guidance given by the Court of Justice of the European Union in Google France, L'Oreal v eBay (iPit post here) and Interflora (iPit post here) but also considers "auto-complete" functions and the use of consumers' search terms within a retailer's website.

Lush is the owner of certain trade mark registrations for the sign LUSH in respect of cosmetics and toiletries, such as Community trade mark number 1388313. Crucially, it does not sell its products through Amazon's retail platform because it saw a difference between its standards of environmental and ethical concerns and those which it attributes to Amazon.

Winning the battle for the moral high ground is much more challenging however, given Lush's application to register as a trade mark the name of Amazon's Managing Director, a move the court described as "bizarre".

Lush's claim against Amazon

Lush complained that the world's largest online retailer damaged the origin function, the advertisement function and the investment function of its marks when it:

i) purchased the keyword LUSH so that third party search engine results pages (such as those on Google) would display advertisements which used the word LUSH in...