Lewis Silkin represents LUSH in successful IP infringement claim against online retailer Amazon

Lewis Silkin’s widely acclaimed intellectual property (IP) and brand management team has represented its client, Lush, the manufacturer, supplier and retailer of cosmetics globally under the LUSH brand, in a successful trade mark dispute concerning Amazon’s website.

The High Court judgment handed down on Monday 10 February 2014 recognises that Lush is a successful business which has built up a reputation for ethical trading which the company wishes to preserve, and acknowledges that Lush had taken the decision not to allow its goods to be sold on Amazon because of the damage that it perceives there would be to that reputation by selling on the Amazon site.

The judgment found that Lush established infringement of its trade mark, citing that the average consumer would generally be unable to ascertain that the goods identified by Amazon’s online search results in response to a search for ‘LUSH’ were not the goods of or connected with Lush. The Court also held that the “right of the public to access technological developments does not allow a trader such as Amazon to ride rough shod over intellectual property rights, to treat trade marks such as Lush as no more than a generic indication of a class of goods in which the consumer might have an interest”. 

This case clarifies the extent to which third parties may use trade marks to generate sponsored advertisements within search engine results or within websites to direct web-traffic to products which do not originate from the trade mark owner. It will deter online retailers from promoting alternatives to products that they do not sell and it will restrict how retailers use search engines on their own sites as well as third party search engines for marketing purposes.

The Lewis Silkin team was led by partner Simon Chapman working alongside trainee Ned Lewis and barristers at Blackstone Chambers and Three New Square Michael Bloch QC, Simon Malynicz and Simon Atkinson.

Simon Chapman, Partner at Lewis Silkin LLP said:

“We are pleased to have worked with the team at LUSH to secure today’s judgment, bringing to bear both technically excellent legal arguments as well as a diligence that showcased our own deep commitment to guiding our clients on how the law dovetails with the responsibilities of those using the internet in today’s digital economy.

Today’s judgment provides much needed clarity with regards exactly how far third parties can go in their use of trade marks to generate sponsored advertisements or direct web-traffic for commercial gain unrelated to the trademark owner. There is no doubt that many online retailers will need to reconsider their approach with regards the promotion of and marketing activity in support of alternative products to ensure they do not fall foul of today’s important precedent.”

Karl Bygrave, Director of Regulatory Affairs for LUSH, said: 

“We believe strongly in Intellectual Property and protecting it is of prime importance to us as we grow our brand around the world. We work hard to maintain our ethical integrity in all aspects of our business. This case has been of primary strategic importance for us. We have worked with Simon Chapman and the Lewis Silkin team for many years and the way that they guided us through the legal process with total empathy for our position was exemplary. The firm demonstrated its widely recognised strengths as a leading brand management law firm with an unrivalled understanding in the areas of intellectual property and advertising/digital media.”

For further information please contact:

David Lawrence
Business Development and Marketing Manager
Tel: 020 7074 8260
Email: david.lawrence@lewissilkin.com