The bath bomb battle – trademarks and keywords considered again

Cosmetic Warriors Ltd (“CW”) has been successful in a UK High Court (HC) infringement action against and Amazon EU Sarl (“Amazon”).     

CW is the company behind the toiletries and cosmetics promoted and sold under the trade mark LUSH.  LUSH branded products are not sold via Amazon but Amazon has been using “Lush” as a keyword in the Google Adwords service to direct traffic to its website. 

The HC had to consider three types of advertising.  The first being the use of the keyword “Lush” which when typed into the Google search engine generates sponsored link adverts for Amazon containing the trade mark LUSH, such as “Lush Bath Bombs at Amazon”. Considering such use, the HC held these adverts to be infringing.

The second is the use of the keyword “Lush” which when typed into the Google search engine generates adverts for cosmetics and toiletries which are similar to Lush branded products but which do not refer to the trade mark LUSH.  These adverts were held not to be infringing as they did not affect the function of the LUSH trade mark.   Upon seeing these adverts a consumer would not be confused as they would understand the advert was for products which are equivalent to “Lush” branded products.

The third type of advertising was use of the term “Lush” in the search engine on the Amazon website.  If a consumer typed in “Lush”, a prompt box was triggered which provided suggestions such as “Lush bath bombs” for consumers to select.  If selected, consumers would be directed to competitor’s products which they would not expect.  Despite Amazon’s arguments that the search engine is controlled by the consumer and the consumer should be able to decide whether the results returned from the search are relevant, the HC held consumers could easily be misled into thinking they were buying genuine Lush products. 

This type of advertising was deemed to damage the origin and advertising functions of the LUSH trade mark.  Such use also affected the investment function of the trade mark as CW had chosen not to sell their products on Amazon because they perceived this would affect their reputation for ethical trading; therefore use by Amazon damaged this reputation.

Amazon has the chance to appeal this decision and it will be interesting to see whether they do, especially as CW has registered managing director’s name as a trade mark to demonstrate what it is like to have a third party use something personal to you without permission.

If you have any specific questions about your own keyword policy please do not hesitate to contact your usual trade mark attorney.