Lush v Amazon - the lessons for all businesses with a web presence

Alex: So plucky UK company LUSH has defeated the mighty US retail steamroller AMAZON in the UK court

Mark: Yes, there were several parts to the case

Alex: But it revolved around the LUSH trademark?

Mark: Lush brought the case after it found Amazon bid on keywords containing ‘lush’ within Google’s AdWords service in order to trigger results on the Amazon site, despite the fact it did not sell the brand. Also someone searching for 'Lush' on Amazon was shown a drop-down menu of equivalent products, some containing the word ‘lush’. 

Lush bought three classes of claim against the online retailer, two related to internet search engines and one over Amazon’s own search generator.

Alex: How is this different from the previous big battle over trade marks between INTERFLORA and MARKS & SPENCER where M&S got a spanking for biding on INTERFLORA as an Google keyword to trigger they own ad?

Mark: well the Adwords part of the LUSH claim is the same. Basically where you have a distinctive brand that is trade marked others should not bid on it. 

Alex: What if the trade mark has some descriptive words and people are bidding on them so their ad appears for searches for someone else's brand?

Mark: That's a good point. We at TRADE MARK DIRECT were accused of infringement by a small time competitor, we'll call them TRADE MARK CHICKEN to spare their embarrassment. They claimed we must be bidding on TRADE MARK CHICKEN as a search term as our ad appeared. What these intellectual colossi failed to twig was that our bidding on TRADE MARK was what made our ad appear. 

Alex: So there was no infringement

Mark: Not a glimmer. Another example would be a plumbing company bidding on 'plumbers' as a search and the trademarked JOES PLUMBERS complaining. Bidding on 'plumbers' is not or ever will be trade mark infringement.

Alex: What did the judge say about the LUSH trademark appearing on the Amazon search

Mark: Basically he thought consumers were likely to be confused into thinking products on Amazon were from Lush, and as that is the fundamental point of trade marks, that consumers not be confused, then Amazon's use was infringing the LUSH trade mark.

Alex: So you can't use another company's trade mark on your website?

Mark: That's a good question, and one that's deserving of a whole new blog post.

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