Lush v Amazon

The High Court determines that Amazon's use of the trade mark LUSH in its sponsored advertisements and on its website constitutes trade mark infringement

Cosmetic Warriors Ltd and another v amazon.co.uk Ltd and another [2014] EWHC 181 (Ch), 10 February 2014

Summary: The High Court held that Amazon infringed the LUSH trade mark by using 'Lush' in its Google sponsored advertisements and in its search facility on the Amazon website when it did not actually sell LUSH products.

Key Practical Consequences:

Advertisers cannot use third party trade marks both as a keyword and in the related sponsored advertisements when the goods under the mark are not available for sale on their website. Advertisers can use third party trade marks as a keyword so long as the resulting sponsored advertisements do not incorporate those marks. This is because consumers are familiar with sponsored ads from competitors. Advertisers cannot use third party trade marks as a search term on their websites where the goods under those marks are not available for sale. Instead, they must make it clear that such goods are not available on their website. Discussion:

The claimants were the manufacturers and suppliers of the popular LUSH brand of cosmetics (together, 'Lush'). Lush is the registered proprietor (and exclusive licensee) of the Community trade mark LUSH in respect of cosmetics, toiletries and soap. The defendants were companies within the Amazon group (together, 'Amazon'), the largest online shopping retailer in the world.

Lush decided not to allow the sale of its products on Amazon's website, as it had built up a reputation for ethical trading which it felt would be damaged by an association with Amazon. Amazon nevertheless bid on Google AdWords which contained the word 'Lush' so that when users searched for Lush products on the Google search engine, it triggered Amazon sponsored advertisements. Amazon also used the keyword 'Lush' in its own search engine.

Lush alleged that Amazon had infringed its trade mark pursuant to Article 5(1)(a) of Directive 2008/95/EC (the 'Directive') which enables an owner of a trade mark to prevent third parties from using an identical sign, in the course of trade, in respect of goods or services which are identical to those for which the trade mark is registered.

The decision analysed three classes of alleged infringements of the LUSH trade mark.

The first class of infringements arose when Amazon had bid on the keyword 'Lush' in the...