Saving your brand name from genericide by search engines

Trademarks are an aspect of corporate personality. Image rights involve the commercial appropriation or exploitation of a personality’s identity and associated images. Amazon and other search engines use these names and images as “Adwords” to encourage consumers to clink on related items. This, in turn, diminishes the value of a trademark and causes it to become too closely associated with a certain class of goods.

In Cosmetic Warriors Limited & Lush Limited v Amazon.co.uk Limited & Amazon EU SARL, [2014] EWHC 181 (Ch), the Judge found Amazon had infringed the registered Community Trade Mark for “LUSH” under Article 5(1)(a) of Directive 2008/95/EC. The infringement stemmed from Amazon’s directing consumers to the sale of equivalent products to those sold by Lush through use of Google Adwords including “lush”, and also through use of “lush” as an indicator of a generic class of such goods.

Lush are manufacturers and suppliers of cosmetic products under the “LUSH” brand. Lush does not allow its goods to be sold via the Amazon UK website. While Amazon does not sell Lush products through the Amazon UK website, it does offer for sale equivalent products and used the word “lush” to drive consumers to those products. The Court found that Amazon used the word ‘lush’ frequently on its website. The judge then determined that use affected the function of the trade mark. In terms of the origin function of a trademark the judge found that “…using the Lush trade mark as a generic indicator of a class of goods, [was] conduct which attacks head on the ability of the mark to act as a guarantee of the origin of the Claimants and nobody else.” Further, in terms of the advertising function the judge found that the ability for Lush to attract custom under the mark would be damaged by Amazon’s aforementioned use.

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