Amazon guilty of infringement of Lush’s trademark
On Feburary 10th, the High Court had ruled that cosmetics company Lush was entitled to prevent Amazon using its trademark to promote rival goods for sale on Amazon and via Google. The judge said “Amazon infringed the 'investment function' of Lush's trademark when it suggested to users of its internal search engine that Lush goods were for sale on its site when in fact they were not.”
Mr John Baldwin QC said in the judgement "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 goods to be sold on Amazon because of the damage that it perceives there would be to that reputation."
This was the first time a UK court had ruled that the investment function of a trademark had been infringed in a keyword advertising case Iain Connor of Pinsent Masons, the law firm behind Out-Law.com, said. "The case is incredibly helpful in allowing brand owners to understand what a trade mark protects and when the use of a trade mark in online advertising will be unlawful," Connor said. "It shows that if your brand is associated with characteristics above and beyond the goods or services themselves, there is an added layer of protection for the brand which means competitors cannot piggy-back the brand where to do so would damage the investment function."
The judge had considered the opinion of a senior manager at Amazon when coming to his view on this point. That Amazon employee had given "common sense answers" when he admitted that Amazon's attitude to UK tax issues could be viewed as "repugnant" by some UK consumers and that brand owners were entitled to take their own view about whether to associate themselves with other businesses that some members of the public might believe act in an "unattractive" way.
Amazon had argued that competition rules and the "right of the public to access technological development" gave it the right to use Lush's mark to display others' goods for sale. However, the judge said that users searching for Lush goods would have expected to have been presented with the option of buying Lush-branded products and that it was not clear enough to users that Lush items were not available for sale on Amazon's site.
Lush had also claimed that Amazon had infringed its trademark rights by buying Google ads promoting the sale of non-Lush goods through its platform when users of Google's search engine had searched for Lush products. Because the ads displayed did make reference to Lush and did not therefore insinuate that Lush products would be available for sale on Amazon, however, Amazon's use of keyword advertising in this regard was legitimate and not an infringement of the cosmetic company's trade mark rights, the judge ruled.
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