The well known LUSH cosmetics brand has scored a significant victory for brand owners in the High Court by successfully suing Amazon for trade mark infringement.

Judgment in the case - Cosmetic Warriors Ltd & Lush Ltd v Amazon.co.uk Ltd & Anor – was delivered on 10 February 2014. The ruling is a blow to Amazon and will require it to make changes to the way its website operates. But the decision could have wider implications for other businesses which advertise their wares online.

Lush are well known, in particular, for selling colourful soaps and bath bombs. Amazon is the largest online retailer in the world.

The case arose out of the way in which Amazon was using the trade mark LUSH in its advertising via Google Adwords and on the Amazon site itself. Lush were careful not to make their own products available online via Amazon. So Amazon was not in a position to sell Lush cosmetics. However, it nevertheless used the LUSH trade mark in certain sponsored adverts via the Google Adwords system. Consumers searching Google for "Lush" were presented with Google searches that included adverts by Amazon suggesting that LUSH cosmetics were available on the Amazon website. In fact, when those adverts were clicked on, the Amazon website only presented alternative products, not LUSH cosmetics.

Similarly, on its own website, where visitors typed in "Lush" into the search box, they were presented with a predictive drop down list that included options to click on such terms as "Lush Cosmetics" etc. But these searches led to listings of products that again did not include any LUSH cosmetics. Significantly, there was nothing on any of the results pages appearing on the Amazon site to indicate to the consumer that Amazon did not have any LUSH cosmetics to sell.

Lush complained that Amazon was committing trade mark infringement.

The High Court agreed. It held that Amazon was damaging Lush's trade mark by using it to draw in visitors to its own site and by selling third party products, whilst not making it sufficiently clear to consumers that no LUSH cosmetics were in fact available for sale through Amazon.

Implications

Amazon may well appeal this judgment. But if the decision is not overturned, Amazon will have to make some changes to its advertising practices and the operation of its website – at least in relation to the use of trade marks to advertise goods of brands that it does not ordinarily sell.

Other online retailers may need to check that their own advertising and websites comply with the ruling. For example, in cases where a consumer puts a search term that is also a trade mark into a retailer's website and that retailer does not have the goods in question, it will need to make clear in any search result that the search has returned a negative, and that the goods being offered in response to the search term are only alternative suggestions.

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