In the case of Cosmetic Warriors Limited and (2) Lush Limited v (3) Amazon.co.uk limited and (4) Amazon EU Sarl  EWHC 181, Lush, the small retail chain that makes and sells cosmetics made from natural ingredients, has succeeded in a claim against Amazon for trade mark infringement of its Community trade mark ‘LUSH’.
The facts of the case were as follows. Lush had made the decision not to allow its goods to be sold via Amazon’s UK website as it did not want to be associated with Amazon. However, when a consumer entered the word ‘Lush’ into a Google search, two sponsored link advertisements for Amazon would appear. Lush claimed that Amazon’s sponsored advertisements infringed its Community trade mark under Article 5(1)(a) (identical mark used in relation to identical goods).
The first advertisement complained of included the mark LUSH:
The Judge held that there was trade mark infringement as the average consumer seeing such an advertisement would expect to find Lush products available on Amazon’s website.
The second advertisement directs consumers to Amazon web pages showing references to similar products to those sold by Lush:
In this case the Judge held that the average consumer would appreciate that such an advertisement was from a supplier offering similar products to those searched for and therefore there was no infringement.
Lush also claimed that Amazon infringed its Community trade mark under Article 5(1)(a) by the search results it provided on its own website search engine. When the letters LU were entered into the search panel, a drop down menu appeared offering the consumer to click on LUSH BATH BOMBS. However, Lush’s products were not actually available and there was no statement stating that Lush items were not available.
Further, when the term LUSH was entered into Amazon’s website search panel, the results page showed similar products to those available at Lush.
Amazon provides three categories of sales via its website. The first is that it sells and delivers its own goods. The second is that third parties can sell their goods through Amazon and Amazon provides delivery services for the goods. The third is similar to eBay where the third party sells its goods through Amazon and the third party delivers the goods to the buyer itself. It is the first two categories where the Judge held that Amazon’s involvement in the transactions is more than sufficient for it to be commercially involved in the offering for sale and selling.
The Judge held that, in circumstances where there is no overt indication whatsoever that Lush products are not available for purchase on the Amazon site and where the consumer has been informed from the drop down menu that Lush Bath Bombs are available, he did not consider that the average consumer would ascertain without difficulty that the goods to which he was directed did not originate from Lush.
He held that this use by Amazon damaged the origin function of the Lush trade mark and also the advertising and the investment functions. He stated that Amazon was using LUSH as a generic indicator of a class of goods, and such conduct attacked the ability of the LUSH trade mark to act as a guarantee of origin. He went on to state that the advertising function of LUSH was bound to be damaged by Amazon’s use of it to attract the attention of consumers and attempt to sell them goods of third parties whilst making no attempt to inform them that Lush goods were not available.
Since this judgement in February 2014, the Court has further held that Amazon is banned from infringing trade mark rights belonging to Lush anywhere in the EU. The two companies tried to negotiate the terms and scope of the ban following the finding of infringement in February 2014. However, the parties failed to reach an agreement and the Court held that the ban should apply EU wide.
Amazon will also have to publish a statement that it has infringed Lush’s rights on its website for one month. However, this has been delayed until the Court of Appeal decides whether to hear an appeal or not.
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