The High Court has imposed a general EU-wide ban on Amazon, preventing it from infringing trade mark rights belonging to Lush, a well-known cosmetics business. The ruling follows Lush’s successful claim that Amazon infringed its trade mark through the use of Google AdWords and Amazon’s own internal search engine.
The facts of the case were as follows. Lush owns a Community Trade Mark for the word ‘lush’ and sells its cosmetics under this brand. It does not allow its products to be sold through the Amazon website. The Court had found that Amazon infringed Lush’s trade mark in two ways. Firstly, Amazon’s sponsored advertisements contained the term “lush” and these took consumers to an Amazon webpage selling products similar to those sold by Lush. Secondly, consumers were provided with a number of search terms such as “lush bath bombs” when the consumer started to type the word “lush” into Amazon’s search bar. The Court concluded that by Amazon’s use of the term “lush”, consumers would reasonably expect that it was selling genuine Lush products.
Following Lush’s successful infringement claim in the first round in the courts, it now sought a general form of injunction against infringement of its trade mark. The Court rejected a submission from Amazon that it would be technically difficult to avoid such infringement. It determined that Amazon had sufficient expertise to do what was required and only commercial reasons prevented it from doing so. Amazon provided no justification as to why it could not inform consumers it did not sell Lush products which would not require a technical overhaul. The Court concluded that the ban should be an EU-wide ban, even though the trial only concerned Amazon’s UK website. Lush owned a Community Trade Mark and there was no reason why the ban should not apply across the whole of the EU.
Serene Allen, a trainee solicitor at Matthew Arnold & Baldwin LLP, comments: “This ruling demonstrates that commercial considerations of infringers will carry little weight when the courts determine the form of any injunction. Where online retailers are using brand names in a generic sense, they should consider whether a change to the mechanics of their search engines would be possible to avoid a potential trade mark infringement claim.”