Following last week’s High Court ruling in the claim brought by Lush against Amazon, online retailers targeting the UK should review how they use brand names on their websites and as search engine keywords to generate sponsored adverts, or risk liability for trade mark infringement.
Lush, the well-known UK cosmetics company, owns a Community Trade Mark for the word ‘LUSH’ and sells cosmetics, including its colourful soaps and ‘bath bombs’, under this brand name. Significantly, Lush did not allow its products to be sold on amazon.co.uk, fearing that this might damage its reputation for ethical trading. However, Amazon was using the LUSH trade mark in its business, both as a search engine keyword to generate sponsored adverts and on its website.
Amazon had purchased LUSH as a keyword so that when a consumer typed this into a search engine, Amazon’s sponsored links would appear. Some of the links included the word LUSH and others did not, but all links took consumers who clicked on them to the amazon.co.uk site and a page displaying goods which were of a similar nature to Lush products. There was no overt message in the link or on the page that Lush products were not available to purchase from Amazon.
Consumers going directly to amazon.co.uk could type LUSH into the search box to search for Lush products. After ‘lu’ had been typed, a drop down menu would appear automatically and various options offered, including ‘lush bath bombs’ and ‘lush cosmetics’. A consumer who clicked on one of these options would be taken to a page displaying goods of a similar nature to Lush products, but they were not told that genuine Lush items could not be purchased on the site. Consumers who chose not to use the drop down menu but to type LUSH in full, would also be presented with a page displaying goods of a similar nature to Lush products. The word ‘LUSH’ would also be displayed on the page, including in the search box (showing what the consumer had typed in), just beneath the search box (as confirmation of the consumer’s request), and in the related searches section (indicating those searches for Lush goods carried out by other consumers).
Lush considered that all of these uses of LUSH amounted to trade mark infringement by Amazon, and issued proceedings.
The UK High Court held:
- Use of LUSH as a keyword to generate sponsored adverts which included the word LUSH was trade mark infringement. The test formulated in the Google France case applied, meaning there would be infringement where ‘the average consumer may erroneously think that the goods advertised emanate from the trade mark proprietor’. That was the case here. The average consumer seeing Amazon’s sponsored adverts would expect to find Lush products available on Amazon. They would believe Amazon to be a reliable supplier of a wide range of products and not to be advertising Lush products if they were not available for purchase.
- However, there was no trade mark infringement in respect of sponsored adverts not including the word LUSH. Online consumers were sufficiently sophisticated to expect an advert for Lush products to include a reference to the Lush name. The average consumer could not fail to appreciate that those adverts not including the name were just more adverts from a supplier offering similar products to those requested by the searcher.
- Use of LUSH in the drop down menu options was trade mark infringement. The average consumer would understand from those options that by clicking on the option they could find Lush products on the site. Because there was no overt message that Amazon did not sell Lush products, consumers would not know that the goods to which they were directed did not originate from Lush. Amazon was using ‘Lush’ as a generic indicator of certain types of cosmetic products and, as such, this also damaged the advertising function (attracting custom) and investment function (reputation for ethical trading) of Lush’s trade mark.
- Use of the word LUSH on the page displaying equivalent goods was also trade mark infringement. Whilst there was no infringement by LUSH appearing in the search box (this was not use of the trade mark by Amazon as consumers had typed this term in), it was infringement for LUSH to be repeated just beneath the search box and in the related searches section. The average consumer would think that these were links to Lush products, helpfully provided by Amazon and were intended by Amazon to aid sales of non-Lush cosmetics.
What should online retailers take from this judgment? The key issue in this case was that Amazon did not sell Lush products but was using the brand name to point consumers to similar products. Where a brand name is to be used in this generic sense, online retailers need to take steps to minimise the risk of liability for trade mark infringement. They can continue with their current search engine keyword strategy and can display a page of similar products when a consumer types the brand name into the search facility on their website. However, they should make it clear in sponsored links which include the brand name, and on the page which displays the similar products, that products bearing the brand cannot be purchased on the site.
Of course, everything depends on the facts of the case.