Cosmetic Warriors Ltd, the company behind “Lush” soaps and bath bombs, has been successful in a UK High Court infringement action against Amazon.co.uk and Amazon EU Sarl, regarding Amazon’s decision to use “Lush” as a keyword in the Google Adword service to direct traffic to its website. The decision is interesting from a legal perspective as it considered three different types of use of adwords and the associated results generated. A full write up of the legal perspective is on our website.
There are, however, some important take-home messages for companies to digest.
Firstly, if you use someone else’s trademark in adverts on a third-party search engine, such as Google, to direct consumers to products that are not the trademark owner’s, you run the risk of being sued for trademark infringement. The same applies in respect of the search function of your own website.
This represents a major sea change. Historically, adword use had been deemed “invisible use” and thus generally was not considered to infringe registered trade marks, in the UK at least. Therefore companies who may have previously made a conscious decision to bid on adwords that involved trademarks of their competitors, in order to try and direct traffic to their own website, should reconsider the risks associated in continuing to do so.
Secondly, it is also envisaged that, on the back of this decision, companies which have historically been dogged by the unauthorised use of their brands by competitors may well become more active in challenging this infringement of their trade mark rights. The decision handed down in the “Lush” case, and the general position of the UK courts, seems to be favouring brand owners more and more and giving them more precedent and certainty in tackling such infringements.
The overriding practical consideration for businesses is that much more care should be taken to respect the trade mark rights of others, because there seems to be less room for unauthorised use of a registered trade mark, even in an “invisible” way. We would recommend that advice is always sought before any commercial steps are taken that use another company’s brand in any way, so that care can be taken to not overstep the mark of what is allowed, when allowing for the current approach of the UK courts. Watching services that allow you to see what your competitors are registering can be a helpful tool, as this gives visibility as to where you need to tread carefully. Searches can be carried out in respect of certain brands to see what has been registered to protect those names, allowing informed decisions to be made as to what adwords could be used without vulnerability to challenge. These are all matters where we are happy to talk to you about what would suit your needs and help your business plans.
As always, the internet is a continually changing landscape but many, from legal practitioners to marketeers, will be watching keenly to see what comes out in the wash next.