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.

Popular posts from this blog

Word Marks? Logo Marks? What’s The Difference?

  So a trademark is your brand, which can be in a form of a word, picture, symbol, or a combination of these. Interestingly enough, 3D objects and sounds can also be registered aside from word trademarks and logo marks. What it does, is to seperate your brand from other goods and services that your competitors may offer. You should consider owning a trademark because it protects you and your consumers from counterfeit and fraud. Also, legal action for a trademark infringement is relatively cheap, sometimes as little as a few thousand pounds, compared to the hundreds of thousands of pounds you have to pay for an action claim of passing off in UK, same goes in the US. Trademarks allow the Trading Standards Officer or the police to criminally charge against counterfeit who use your trademark without your consent. It’s a good way to protect your hard earned good name, don’t you think? But what exactly will you register? A  word mark  registers the word itself you want to use, Apple/Puma/Zy
Read more

Trademark Registration dispute over Keep Calm and Carry On

Image
   WE NEED YOU! Join us to fight for the right of UK businesses to use the much loved slogan ‘KEEP CALM AND CARRY ON’ When  ‘KEEP CALM AND CARRY ON’  was used by the British Government in 1939, Britain was facing a possible invasion. Today, we are seeing the long arm of Europe encroaching on our national heritage again. The EU has granted an EU Community Trade Mark to  ‘KEEP CALM AND  CARRY ON’  meaning that only one company may use the slogan for  clothing, mugs, posters and other memorabilia. This could potentially put  many companies out of business. This is wrong and we do not believe it would have been accepted by the UK Trade Mark Registry for the following reasons: ‘KEEP CALM AND CARRY ON’  is part of the UK’s national heritage, first being used in 1939 on government posters to strengthen morale in the face of a possible German invasion Prior to the trade mark being registered, many businesses used  ‘KEEP CALM AND CARRY ON’  as decoration on a wide variety of goods This means th
Read more