Lush beat Amazon: Retailers Relax

Mark Leiser: I am a PhD Candidate in Cyber Law at the University of Strathclyde in Glasgow. I have written submissions for the Leveson Inquiry into the culture and ethics of the media and for the Scottish Parliament on the use of social media during trials. My PhD is supervised by Professor Andrew Murray at the London School of Economics and focuses on the effectiveness of cyber-regulation. My research and interests revolve around main areas of Internet law and policy including internet governance & regulation, democracy, social media, privacy, and intellectual property. My PhD research focuses on developing a system of modelling to measure the effectiveness and legitimacy of Internet Regulation. I write in a personal capacity.

Cosmetic soap company Lush won a high court case against Amazon.co.uk this week after successfully arguing that the online retail giant had infringed its trademark by redirecting customers that were searching for the term, ‘Lush’ to non-Lush competitors. The judgement adds to the growing body of case law where third parties use trademarks to direct web traffic to products that do not originate from the trade mark owner.

Lush does not sell its products on Amazon.co.uk, in part due to the ethical concerns of its owner Mark Constantine about the retailer’s business practices. Lush has poured salt in Amazon’s wound by trademarking a line of bathroom products under the name, “Christopher North”. North is the managing director of Amazon UK. Constantine said he had trademarked the name of Amazon boss to "make a point about how upsetting it is to have something personal to you, used by someone else".

Ironically, Lush does not sell its products on Amazon site because of its ethical approach to business. "We asked them 17 times before we went to court," he said. "After a while you realise you're being bullied."

The court held that Lush established infringement of its trade mark. Deputy Judge John Baldwin QC determined that the average consumer would not be able to determine that the online search results provided by Amazon would be confusing: Someone searching for Lush soap would not be able to identify that the goods offered by Amazon were not Lush goods, or connected with the company.

Judge Baldwin QC said: “This right of the public to access technological development does not go so far as to allow a trader such as Amazon to ride rough shod over intellectual property rights, to treat trademarks such as Lush as no more than a generic indication of a class of goods in which the consumer might have an interest”.

Could this judgement deter online retailers from promoting alternatives to products that they do not sell? Will it restrict how retailers use search engines within their own proprietary sites for marketing purposes? Probably not. Not to slight the sitting judge in this instance, but John Baldwin QC was a deputy judge. The case was a “low level” dispute. Amazon is going to appeal and the previous case law in this area suggests that a web site operator cannot be held liable for trademark infringement when the search results are returned through automatic processes, thanks to the lack of a general monitoring requirement for Information service providers. Consider the efforts retailers take to promote alternatives to products that they do not sell, how much money they appear to make, and how rare it is for any actions against a retailer to get to court, it is unlikely that this will have a drastic consequence on the world of retailing.

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