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Lush threaten Amazon with release of revenge toiletries

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Mark Constantine, founder of cosmetics company Lush, has employed a rather novel tactic in order to give the online retail giant, Amazon, a taste of its own medicine.   Not satisfied with recently winning a High Court battle against Amazon over its use of the word "lush" on its website, Constantine has trademarked the name "Christopher North".   Mr & Mrs Constantine, the husband and wife team behind Lush, plan to use this new brand name, which so happens to be the name of the managing director of Amazon UK, for a new range of toiletries, which include a new shower gel, with the tagline "rich, thick and full of it".

As mentioned above, Lush has waged a three-year legal battle in respect of Amazon's, or more accurately companies connected with them, use of the sign 'Lush' in respect of toiletries and cosmetics. Lush remain the registered proprietor and exclusive licensee of this sign.  The main point in issue was the Amazon's use of the word "Lush" to sell products on its site that looked very similar to a number of Lush's most popular cosmetic lines, such as Lush's "sex bomb" bath salts and "Prince Charming" shower gel. 

There were three classes of claim, which were as follows:

  • The result of a consumer using the search term 'Lush' on any online search engines.  The first class of adverts showed the Lush mark in a number of locations.  A consumer clicking on the relevant link would be taken to Amazon and given the opportunity to peruse or purchase equivalent products to those sold by Lush, but not actually manufactured by them.
  • Members of the second class of adverts did not use the Lush mark, but made references to equivalent or similar products to those sold by Lush.  Crucially, there was no obvious message to the effect that the Lush products were not available for purchase on the Amazon website.
  • The third class of alleged infringements concerned the operation of Amazon's own website.  If a consumer was to undertake a search for Lush products on Amazon's website it would result in a drop-down menu identifying various Lush goods and a display of products similar or equivalent to those sold by Lush, but no display of any actual Lush products and again, no overt message to the effect that Lush's products cannot be purchased from the Amazon website.

In the High Court ruling, Judge John Baldwin said: "[The] right of the public to access technological development does not go so far as to allow a trader such as Amazon to ride roughshod 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".

Reflecting upon the High Court ruling, Mr Constantine said: "we asked them [Amazon] 17 times before we went to court….after a while you realise you're being bullied".  However, it appears that Mr Constantine has had the last laugh, as it has been reported that Mr North is "hoping mad" at Mr Constantine's decision to trademark his name and potentially release a number of products under it.  

Mr Constantine had initially only trademarked the name of the Amazon boss to prove a point, however, due to Amazon's persistent refusal to admit to any wrong doing, Constantine is seriously considering putting North shower gel on the market, with all of the profits going to a good cause.  Mr Constantine added that his marketing team have enjoyed coming up with a number of potential strap lines for the new product, which include a promise that the shower gel will flow "straight to your fulfilment centre with its super saver delivery" and includes a top tip: "Kindle a new love for your skin, it's not taxing to take care of your skin with this product packed with Amazon Prime ingredients".

If you need any advice or information regarding trademarks or any other area intellectual property please contact Christopher Ahearne on 01245 228130 or email ahearnec@gepp.co.uk

The above is not legal advice; it is intended to provide information of general  interest about current legal issues.

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