AdWords returned as a trademark battleground this week with UK cosmetics company Lush taking Amazon to the High Court of England and Wales, claiming trademark infringement. Following the Interfloraruling earlier this year, the issue of keyword use remains a live topic in the UK courts.

Lush does not permit Amazon to sell its products and, in a statement to CosmeticDesign-Europe.com, the company argued: “We have trademarks that we have built a reputation on over many years around the world. Amazon has been buying Google and other search engine AdWords for Lush and other Lush-related terms. This is done to drive traffic to Amazon’s website, which does not sell Lush products. When people get to Amazon’s site and search ‘Lush’, they are shown a competitor’s product. This, on a website designed for speedy transactions, can lead to customers mistaking other company’s products as being from Lush… There is not a theoretical risk as actual real customers have said they have been misled.”

As reported previously by WTR, the UK High Court’s judgment in Interflora v Marks & Spencer plc found that M&S’ use of the INTERFLORA trademark as a Google AdWord to advertise its M&S Flowers & Gifts website was trademark infringement. However, the case hinged on specific circumstances. Avidity IP’s Rob White told WTR: “There are certainly some similarities between this case brought by Lush and the previous Interflora decision as Google AdWords are involved.  Also, the use of the main ‘house’ mark of a company in a manner that the company deems to be unauthorised is at issue here, so the considerations in the Interflora case will be important. In Interflora, M&S were found to infringe the INTERFLORA trademark because M&S often had commercial tie-ins and deals with other retailers.  Therefore, consumers would be more likely to assume Interflora and M&S had an association with each other for flowers. Here, Amazon do stock the products of many different retailers with significant numbers setting up their own Amazon store pages.”

White believes that an important question to consider is whether or not a consumer believes that, by typing ‘lush’ into Amazon, they would be getting a Lush product. “Will they be confused, even if this is just initially, where the confusion is later removed in the transaction?” The concept of initial interest confusion as referred to in Interflora will, in White’s view, be key to Lush’s case. “Even if only a small number of consumers are initially confused, that can be sufficient to find infringement.  It may be that part of any defence would be to argue that the word ‘lush’ has more general connotations with cosmetics, as being luxurious in nature.”

A ruling in the case is expected early next year. Like Interflora, White feels that the case may be “quite fact specific” rather than paving the way for a wave of actions. For trademark counsel, though, he feels that it is a timely reminder to take great care when using a competitor’s trademark in their AdWord policy or online, “to make it absolutely clear they are simply offering an alternative product”.

This blog was first published in World Trademark Review on 4 December 2013

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