The bomb has fallen on Amazon…
The High Court drops a bath bomb on Amazon by finding in favour of LUSH over infringement of their trademark in an area of the law previously in soapy waters.
The latest decision concerning online trademark use may well have giant online marketplaces like Amazon quaking behind their computer screens. This latest triumph for ‘David over Goliath’ may open the floodgates for other such cases, sparking a shift in what we know the essential functions of a trademark to be, in order to protect the rights of brand owners as much as the consumer.
What the court says
The key findings leading to the decision in LUSH were focused upon Amazon making unauthorised use of the trademark LUSH, owned by Cosmetic Warriors, in their methods of marketing to the general public. Such methods were condemned by the brand owners who had previously made a public statement denouncing any association with Amazon, and making it very clear that none of their products would be made available for purchase through Amazon.
A particular complaint brought by Cosmetic Warriors, was that Amazon’s use of the trademark LUSH in their drop down menu, lead the average consumer to believe that the particular products were available for purchase through Amazon. In fact, such a search would provide a consumer with results relating to an alternative brand, BOMB COSMETICS that was not associated in anyway with LUSH. The court decided in this instance that Amazon had given no indication to its consumers that LUSH products were not available on their site, and that the drop down encryption of the LUSH trademark would create the assumption that the results containing the BOMB COSMETICS range were products originating from LUSH.
Towards shaping the future of trademark law
From a trademark perspective, the essential function of a Mark is to protect the consumer, and enable them to identify the origin of the product that they are purchasing. The appearance and branding of the BOMB COSMETICS range of bath bombs makes them visually similar to the parallel products emanating from Cosmetic Warriors. This was sufficient for the court to rule that a consumer would have some difficulty to arrive at the conclusion that the two brands were not connected. If carried to a logical conclusion, this decision could serve to change the way Amazon conducts its business, in that it may not be able to provide search results containing ‘similar’ products when a consumer conducts a search for a particular item. It can be assumed that Amazon will be challenging this decision, as they are likely to argue that such a restriction will be detrimental to their business.
In any event, further consideration must be given to the question whether rights owners should be allowed to control the extent to which a registered trademark such as LUSH can be manipulated when a consumer conducts an online search. If the controls are too tight, the brand owner may be given an advantage that unduly restricts the freedom of choice for the consumer. Such a move would surely impact upon the way in which consumers behave online, as their interests are best served if they can evaluate the search results based on a balance of cost, quality, variety and appeal. To achieve this, they would wish to see the full choice of products that may be available for purchase.
The consequential impact of LUSH
As it stands, the ruling from the High Court may serve to deter online retailers from promoting alternative third party products that they do not own or have control over.
Moreover, this ruling could restrict the rights of online retailers in the way in which they manipulate the search functions of their websites, and the way in which third party and external search engines are used for marketing purposes.
In any event, given the decision in Interflora v Marks & Spencer, this case provides a further insight as to how trademark law is adapting and evolving to allow for the advancements in online technology and to continue to balance the rights of the brand owner with the freedom of choice and confidence of the consumer.
As anticipated, Amazon has already set an Appeal in motion, so watch this space…!
If you wonder how this decision may impact upon your business….please contact the team at Albright IP and let us help you.
The experienced team at Albright IP will be able to offer advice in all areas of trademark law and practice, including the use of trademarks in online retail, and generally across the internet.
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