1. Cosmetic Warriors Ltd and Another v 1. Amazon.Company UK Ltd and Another
| Jurisdiction | England & Wales |
| Judge | Mr John Baldwin |
| Judgment Date | 10 February 2014 |
| Neutral Citation | [2014] EWHC 181 (Ch) |
| Docket Number | Claim No HC 12C00385 |
| Court | Chancery Division |
| Date | 10 February 2014 |
[2014] EWHC 181 (Ch)
Mr John Baldwin QC
(sitting as a Deputy Judge of the Chancery Division)
Claim No HC 12C00385
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY
Michael Bloch QC, Simon Malynicz and Simon Atkinson (instructed by Lewis Silkin LLP) appeared on behalf of the Claimants.
Henry Carr QC and Thomas Mitcheson (instructed by Edwards Wildman Palmer UK LLP) appeared on behalf of the Defendants.
Hearing dates: 25th to 29th November 2013
HTML VERSION OF JUDGMENT
The Claimants, who I will call Lush, are the manufacturers and suppliers of cosmetics under the Lush brand. Lush is well known for its colourful soaps and also for its bath bombs. I was told that Lush invented the bath bomb and originally was closely associated with that name.
The Defendants, who I shall call Amazon, are part of an online shopping group which trades under the Amazon brand. Amazon contends that it is the largest online shopping retailer in the world. It sells via its website both its own goods and the goods of third parties.
The Claimants are, respectively, the registered proprietor and exclusive licensee of Community trade mark number 1388313 for the sign Lush in respect of cosmetics and toiletries, including soap, in class 3, and the action is for infringement of trade mark. The first Claimant owns other trade marks as well, but it was common ground that I need consider only this one for the purposes of determining liability. Originally there claims under Articles 5(1)(a) and 5(2) of the Directive [1] (Articles 9(1)(a) and 9(1)(c) of the Regulation [2]) and passing off but only the first claim was maintained by the end of the hearing. At one point there was a counterclaim for invalidity of the registration based on lack of distinctive character but this was dropped well before the hearing.
The second Defendant operates the website at www.amazon.co.uk and the first Defendant operates fulfilment centres located in the UK as well as offering logistic services to the second Defendant. Although Amazon is a world wide brand, this action concerns only the operation of the UK site. Up to the present it has not been possible to buy the Claimants' products from www.amazon.co.uk. However Amazon do sell certain Lush branded products, including Lush Hair Extensions (from the Beauty Department), from a third party supplier.
Lush alleges that both Defendants are joint tortfeasors in connection with the matters complained of, that they are each party to a common design to infringe the Lush trade marks. Amazon accepts that any order of the court will be satisfied jointly by both Defendants, but denies the allegation. This is a matter to which I will return. Neither side appeared to contend that the allegation had much significance in the great scheme of things, but Amazon were concerned to establish that it failed on the facts. Finally, in addition to a general denial of infringement, Amazon relies on the provisions of Articles 12(1) and/or 14(1) of the E-Commerce Directive 1000/31/EC.
There are three classes of claim and each must be addressed separately. The first two concern the consequence of a consumer typing the word Lush, or an expression containing Lush, into a search engine such as Google, and the third concerns the consequence of a consumer typing the word Lush into the search facility on the amazon.co.uk website.
Thus, the first two classes of claim concern internet advertising and are a result of Amazon having bid on certain keywords, in particular ones including 'lush', within the Google AdWords service so as to trigger a sponsored link advertisement appearing on the Google search engine results page (typically on the right hand side of, or above, what are known as the "natural" or "organic" results) whenever a consumer types 'lush' into the search box.
Members of the first class of advertisements show the Lush mark in several places, the following example of a result of a search for 'lush' being annexed to the Particulars of Claim:
www.amazon.co.uk/lush+soap
amazon.co.uk is rated *****
Low prices on Lush Soap
Free UK Delivery on Amazon Orders.
If a consumer clicks on the relevant link he is taken to the amazon.co.uk website and presented with the opportunity to browse or purchase equivalent products to Lush Soap. There is no overt message either within the advertisement or on the Amazon site that Lush Soap is not available for purchase from Amazon.
Members of the second class of advertisements do not show the Lush mark, but do show references to equivalent or similar products to those sold by Lush, the following example of a result of a search for 'lush cosmetics bath bomb' being annexed to the Particulars of Claim:
www.amazon.co.uk/bomb+bath
amazon.co.uk is rated *****
Low prices on Bomb Bath
Free UK Delivery on Amazon Orders.
If a consumer clicks on the relevant link he is taken to the amazon.co.uk website and presented with the opportunity to browse or purchase Bomb Cosmetics and other similar products. There is no overt message to the effect that the Lush Cosmetics Bath Bomb is not available for purchase on the Amazon website.
In the annex just referred to, there is another sponsored ad and it is from a third party and it appears above the one for Amazon. It is in the form:
>
www.[url of third party]
Huge discounts available to buy
bath bombs on line. Fast delivery
The third class of alleged infringements relates to the operation of Amazon's own website. By way of example, if a consumer searches for the word 'Lush' in the relevant "department" of Amazon's UK site (e.g. "Beauty" or "Health and Personal Care"), the first thing to happen after the letters 'lu' are typed, is that a drop down menu appears and various options are offered such as 'lush bath bombs' or 'lush cosmetics' or 'lush hair extensions', the consumer being offered the opportunity to click on one of these options whereupon a new page will appear. In the case of a consumer clicking on 'lush bath bombs' or 'lush cosmetics' the new page will offer similar products to those available from Lush without any overt reference to the Lush item not being available. In the case of a consumer clicking on Lush hair extensions, the consumer is presented with a page containing hair extensions from a third party manufacturer called Lush as well as other third party products.
If however the consumer continues to type in Lush into the search bar and then searches the site, the following page may be displayed:
Within this page, the uppermost instance of Lush was by the consumer making an entry into the search box, the second uppermost (adjacent the word Beauty and surrounded by double quotation marks) was arranged to occur by Amazon and is intended to be a repeat of the consumer request, the third uppermost (and following the heading 'Related Searches') was arranged to occur by Amazon and is a list of searches to indicate to the consumer what prior consumers, also searching for Lush, have also searched (this list being extracted from a database of such information which Amazon has compiled for this purpose), and the entry for Lush under Brand at the left hand side is arranged by Amazon, to indicate to the consumer what brands may be searched for in the Beauty category. The list of products in the body of the web page are products which Amazon hopes will be of interest to a consumer searching for Lush products; none of them are the Claimants' products and the promotion for Lush Hair Extensions is not seen until page 4 or so.
Slightly different results may be obtained if the consumer enters the term 'Lush' as a search into "All Departments" (i.e. all departments of Amazon) but the general picture is the same. There will be a drop down menu identifying various Lush goods and a display of products which are similar to or equivalent to those sold by Lush, there will be no display of any Lush products of the Claimants and there will be no overt message to the effect that the Claimants' Lush products are not available from the amazon.co.uk website.
Thus there are various examples where the Lush registered trade mark appears on the amazon.co.uk website.
The products which are displayed pursuant to a search request for 'Lush' fall into one of three categories, although these categories are not clearly distinguished on the Amazon site, on the contrary they appear to be all mixed up together. The first category includes goods which are owned by Amazon and Amazon sells and fulfills the order for the goods. The second category includes goods owned by a third party and Amazon provides fulfillment services (a range of services such as stocking, dispatching the order, customer service and returns). The third category includes goods which are owned by a third party and the sale is fulfilled by that or another third party. Thus in respect of this latter category, Amazon merely provides an opportunity for a customer to purchase third party goods. From the materials I have seen, the majority of the goods displayed pursuant to a search request for 'Lush' are in the first two categories.
There is a sub-issue in relation to the third class of complaint in that it is alleged that the competitor products within the search results are similar in appearance to the get up of Lush's products. I understand the gravamen of this allegation to be that such similarity increases the likelihood of the consumer thinking that the products returned on the search are or are connected with Lush products. The claim, however, is not limited to searches which produce goods which have this alleged similarity of get up. Moreover, and in this connection, it is relevant to note that the expression 'bath bomb', although once uniquely...
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