A recent High Court decision held that Amazon’s use of Lush’s trade mark as a keyword for the Google AdWords service infringed the cosmetic company’s rights. Amazon’s online search facility also prompted search options for terms relating to Lush which would direct the user to alternatives to Lush products. This was also an infringement. The implications for businesses with active online marketing strategies should be noted.
The virtual online daggers were drawn
Amazon made use of its intelligent consumer analysis software to make automated bids for search terms relating to ‘Lush’ which were to be used as Google AdWords. When searched, the results would produce sponsored advertisements for Amazon. Amazon also made use of the word Lush within its UK website whereby Amazon search facility users would be prompted to click on Lush search options, which would then direct the user to alternative products to Lush. Amazon was not authorised to make use of the Lush trade mark in this way and did not stock or offer for sale Lush products.
An important fact to note is that Lush had developed a reputation for ethical trading strategies and expressly refused Amazon’s advances to allow Lush products to be sold via Amazon. Lush’s refusal was based on the damage that it perceived would be caused to its reputation by selling on the site.
Lush complained that Amazon’s use of the trade mark had a detrimental impact on its reputation and affected the essential origin, advertisement and investment functions of the trade mark.
The ‘bath bomb’ was dropped
The Judge commented that there was little difficulty in finding that the Google sponsored links results, to Amazon adverts featuring Lush in their title, were an infringement. The Judge reasoned that the average consumer reading Amazon’s sponsored link would expect to find Lush products for sale on Amazon’s site.
The Judge considered that the average consumer, browsing the Amazon site in search of Lush products, would generally be unable to ascertain that the goods identified by Amazon’s search engine were not goods of, or connected with, Lush.
It is also noteworthy that the Judge did not think that expert evidence or consumer survey evidence was required to determine the issues.
Considerations for businesses:
- It is unlawful to make use of keywords which are identical to a third party’s trade mark, where the result leaves the consumer unable to easily identify whether the products/services advertised originate from, or are connected to, the trade mark owner.
- Online advertisers are less likely to infringe if their adverts do not include the third party trade mark in their sponsored advert text.
- It may be unlawful to make use of a third party’s trade mark to direct web traffic to products/services which do not originate from the trade mark owner.
- Online advertisers are less likely to infringe if they can demonstrate that a consumer’s attention is simply being directed towards their competing product/services and that there is no likelihood of consumer confusion as to the origin of that product. A notice or warning that the trade mark owner’s product is not sold by the advertiser may assist in diluting the potential for consumer confusion.
- Issues such as the products/services themselves, business models, sector interests, corporate values and marketing strategies may impact on whether or not the use of a third party trade mark in online advertising is unlawful.
There are suggestions that Amazon may be appealing the High Court decision and we understand that Lush has registered “Christopher North” (Managing Director of Amazon.co.uk) as a trade mark. The battle looks set to continue.
If you require any further information on the subject, or if you are currently dealing with such issues, then please do not hesitate to contact us.
If you have any questions or would like more information please contact Andrew McGregor, Solicitor, Commercial Litigation - Intellectual Property.This information is intended as a general discussion surrounding the topics covered and is for guidance purposes only. It does not constitute legal advice and should not be regarded as a substitute for taking legal advice. DWF is not responsible for any activity undertaken based on this information.