The Chancery Division considered a claim by Lush, a cosmetics company. Lush contended that the defendant companies, which were part of Amazon, the online retailer, had infringed its trademark by using it to direct customers to other products similar to, but not sold by, Lush.
Cosmetic Warriors Ltd and another v Amazon.co.uk Ltd and another: Chancery Division: 10 February 2014
Infringement – Internet – Claimant company, Lush, making cosmetics and holding trademark – Defendant companies, together, Amazon, using references to Lush to direct consumers to similar products sold on Amazon’s website
The claimant company, Lush, manufactured cosmetics and soaps, including the ‘bath bomb’. It was the registered proprietor and exclusive licensee of Community trade mark no 1388313 for the sign ‘Lush’ in respect of cosmetics and toiletries, including soap. The defendants were companies connected to the online retailer Amazon (together, Amazon). Lush brought an action for passing off and infringement of its trademark. It submitted that the defendants were joint tortfeasors, in that they were each party to a common design to infringe the Lush trademark.
Lush submitted, among other things, that Amazon’s use damaged the origin function, the advertisement function and the investment function of its trademarks. There were three classes of claim. The first two concerned the consequence of a consumer typing the word ‘Lush’, or an expression containing that word, into a search engine such as Google. The first class of adverts showed the Lush mark in several places. A consumer clicking on the relevant link would be taken to Amazon and presented with the opportunity to browse or purchase equivalent products to those sold by Lush.
Members of the second class of adverts did not show the Lush mark, but made references to equivalent or similar products to those sold by Lush, so that a consumer searching for ‘Lush cosmetic bath bombs’ would be sent to the Amazon website and presented with the opportunity to browse similar goods. There was no overt message to the effect that the Lush cosmetic bath bomb was not available for purchase on the Amazon website. Applying established principle, it was clear that infringement would be established in the first two classes of claim if the use was such as to affect or be liable to affect the functions of the trade mark.
The third class of alleged infringements related to the operation of Amazon’s own website. Searching for Lush products on Amazon’s website would result in a drop-down menu identifying various Lush goods and a display of products similar or equivalent to those sold by Lush, but no display of any Lush products and no overt message to the effect that Lush’s products were not available from the Amazon website. Regarding the third class, it was necessary to determine whether the use was a use in the course of trade by Amazon in relation to the relevant goods and, if so, whether it was such as to affect the function of the trademark.
The claim would be allowed.
(1) On the evidence, Lush had established infringement with respect to the first class of infringements. The average consumer, on seeing the advert, would expect to find Lush soap on the Amazon site and would expect to find it at a competitive price. The consumer was unlikely to think that Amazon would advertise Lush goods if they were not available for purchase. The consumer would ascertain that the goods referred to in the advert were the goods of or connected with Lush (see  of the judgment).
Google France SARL v Louis Vuitton Malletier SA; same v Viaticum SA; same v Centre National de Recherche en Relations Humaines (CNRRH) SARL: C-236/08, C-237/08 and C-238/08  All ER (D) 23 (Apr) considered.
(2) Regarding the second class of infringements, average consumers would expect an advertisement for Lush products to include some reference to the Lush mark, some indicia which would distinguish that advert from the adverts of others that a consumer might expect to see on the results of a Google search. The average consumer could not reasonably fail to appreciate that the Amazon advert was just another advert from a supplier offering similar products to those requested by the internet searcher (see ,  of the judgment).
Interflora Inc v Marks and Spencer plc  All ER (D) 95 (Jun) applied; Google France SARL v Louis Vuitton Malletier SA; same v Viaticum SA; same v Centre National de Recherche en Relations Humaines (CNRRH) SARL: C-236/08, C-237/08 and C-238/08  All ER (D) 23 (Apr) considered.
(3) With regard to the third class of infringements, the average consumer was unlikely to know how the drop-down menu had the content that it displayed, but was likely to believe that it was intended to be helpful to him and was some consequence of other searches that had been carried out. It would inform the average consumer that, if he were looking for Lush bath bombs on Amazon, he would find them by clicking on that menu item.
On the facts, Amazon could not escape from the conclusion that it had used the Lush sign in the course of trade in relation to the relevant goods based on the principles of the case law. It had used the sign as part of a commercial communication that it was selling the goods on its website. In the circumstances, the average consumer would not ascertain without difficulty that the products he was shown were not Lush products. That illustrated that Amazon was using the Lush trademark as a generic indicator of a class of goods. By that use, Amazon damaged the origin function of the trademark. That use also damaged both the advertising function and the origin function of the trademark (see , , ,  of the judgment).
The defendants had joined together and agreed to work together in the furtherance of a common plan that included doing the acts which were complained of by Lush in the proceedings (see  of the judgment).
L’Oreal SA v Ebay International AG  All ER (D) 169 (Jun) applied; Google France SARL v Louis Vuitton Malletier SA; same v Viaticum SA; same v Centre National de Recherche en Relations Humaines (CNRRH) SARL: C-236/08, C-237/08 and C-238/08  All ER (D) 23 (Apr) considered.
Michael Bloch QC, Simon Malynicz and Simon Atkinson (instructed by Lewis Silkin LLP) for Lush; Henry Carr QC and Thomas Mitcheson (instructed by Edward Wildman Palmer UK LLP) for Amazon.