Lewis Silkin client Lush has won a monumental trademark battle against Amazon at the High Court.
Online giant Amazon was slammed for directing consumers to products titled ‘lush’ despite the fact ethical cosmetics company was boycotting the site.
John Baldwin QC, sitting as a deputy judge in the Chancery division, held that Amazon had damaged the “origin function, advertising function and investment function” of the Lush trademark after directing consumers to similar cosmetics on its site.
Lush brought the case after Amazon bid on keywords containing ‘lush’ within Google’s AdWords service in order to trigger results on its site, despite the fact it did not sell the brand.
Searching on Amazon also generated a drop-down menu of equivalent products, some containing the word ‘lush’. Lush bought three classes of claim against the online retailer, two related to internet search engines and one over Amazon’s own search generator.
Amazon argued that directing consumers to similar products was a common feature of online shopping and said customers would soon realise the products were not Lush branded.
But Baldwin QC said: “I reject Mr Carr’s argument to the effect that the average consumer would, without difficulty, ascertain that the goods referred to by the ad were not the goods of or connected with Lush.”
He said: “I reject the contention that the average consumer who was typing Lush into the search box would think that the drop down menu reference to Lush Bath Bombs was a reference merely to products which were similar to or competitive with the Lush product.
“The consumer is likely to think that Amazon is a reliable supplier of a very wide range of goods and he would not expect Amazon to be advertising Lush soap for purchase if it were not in fact available for purchase.”
The fight was particularly vicious due to Lush’s high-profile contempt for Amazon’s business practices – the company refuses to sell its products on Amazon’s site because of its attitude to UK tax, among other things. The court heard that it refused to sell on Amazon as it felt the decision would damage its ethical brand.
Baldwin QC said: “Lush is a successful business which has built up an image of ethical trading. This is an image which it says it wishes to preserve and it has taken the decision not to allow its good to be sold on Amazon because of the damage that it perceives there would be to that reputation.”
He added: “Mr Shipley, a senior manager of the first defendant, accepted that some consumers would regard Amazon’s attitude to, for example, UK taxation as repugnant and he also accepted that a brand owner was entitled to his own view as to whether his brand should be associated with companies which are believed by some members of the public to act in ways which they find attractive.”
The case is a cautionary tale for retailers promoting alternative products in relation to specific search terms. It could restrict how online sellers use search engines on their own sites as well as third-party search engines for marketing purposes.
The legal line up:
For the claimants (1) Cosmetic Warriors Ltd (2) Lush Ltd
Blackstone Chambers’ Michael Bloch QC, Three New Square’s Simon Malynicz and Wilberforce Chambers’ Simon Atkinson, instructed by Lewis Silkin partner Simon Chapman
For the defendants (1) Amazon.co.uk Ltd (2) Amazon EU Sarl
4 New Square’s Henry Carr QC and Three New Square’s Thomas Mitcheson, instructed by Edwards Wildman Palmer partner Nick Bolter