We have previously commented on the High Court's judgment in the Lush -v- Amazon trade mark case (see http://wedlakebell.com/articles-and-comment/2014/03/10/cosmetic-warriors-strike-a-blow-against-amazon-in-trade-mark-fight/). That case ended in a victory for Lush but Amazon has sought to test the extent of its victory by contesting various matters including the nature of the publicity order.
Since new EU enforcement rules came into effect in 2006, the courts have been obliged in IP cases to consider imposing an obligation on the losing party to publicise the judgment against it at its own expense. For a time, following a run of High Court decisions, it was generally thought that such orders would tend to be made as a matter of course at the conclusion of IP cases. However, the whole subject of publicity orders received considerable judicial scrutiny in the aftermath of the Community design case brought by Apple against Samsung. In that case, the court said that it should only make publicity orders where they serve one of the two purposes set out in the relevant EU Directive on enforcement and in other cases where there is a real need to dispel commercial uncertainty in the marketplace.
In the Lush -v- Amazon case, Lush sought an order for a half-page advertisement to be published in a number of national newspapers (including the Times, Guardian, Telegraph, Independent, Daily Mail etc), as well as on the home pages of Amazon's UK, German, French, Italian and Spanish websites for two months.
Amazon objected strongly. It argued that the judgment had already gained considerable publicity in the press which rendered the newspaper advertising wholly unnecessary. They also objected to the size of the notice, the fact that it referred to commercial matters, not just legal matters, and to the two-month period Lush wanted the notice displayed for.
The court broadly accepted Amazon’s points. It said that the publicity in the media about the case had already been sufficient so as to remove the need for newspaper advertising. The court also ordered a much reduced wording for the notice and confined publication to the relevant pages only (not the home page) of Amazon's UK website for one month.
As this case demonstrates, publicity orders need to be framed with care, and the court’s policy will clearly be to scrutinise very carefully what is being proposed.