Cosmetic Warriors Ltd & Anor v amazon.co.uk Ltd & Anor

Trade mark infringement under Article 5(1)(a) requires use of an identical sign in the course of trade in relation to identical goods, with use liable to affect a trade mark function. In keyword advertising, the decisive question is whether the reasonably well-informed and reasonably observant internet user can ascertain without difficulty whether the advertised goods originate from, or are connected with, the proprietor.

An online retailer may itself use a mark where its search engine and commercial operations jointly present competing goods as though they answered a branded search. The origin, advertising and investment functions may each be affected.

The claimants, the proprietor and exclusive licensee of the Lush Community trade mark for cosmetics and toiletries, sued the operators of the UK Amazon website. They alleged infringement through Google keyword advertising and through Amazon’s internal search, drop-down suggestions, related searches and product displays.

The claim maintained at trial was infringement under Article 5(1)(a) of Directive 2008/95/EC. Amazon denied infringement and relied, in relation to third-party listings, on Article 14 of the E-Commerce Directive. The central issues were whether Amazon had used the sign in the course of trade and whether the use affected the functions of the mark.

1. Sponsored advertisements displaying Lush. Applying Google France, the court held that the average consumer would expect Lush soap to be available on Amazon and could not ascertain without difficulty that the advertised goods were not Lush goods or connected with Lush. Infringement was established.
2. Advertisements for competing goods without displaying Lush. The claim failed. Consumers were familiar with sponsored advertisements from competing suppliers and would expect an advertisement for Lush products to contain some reference or indicium distinguishing it from competing advertisements. Interflora v Marks & Spencer [2013] FSR 33 was factually distinguishable.
3. Internal search facilities. The consumer’s initial entry of Lush alone was not use by Amazon. However, Amazon’s automatically generated suggestions and related searches formed part of Amazon’s commercial communication. Its integrated search and retail operations made the position materially different from a neutral marketplace merely displaying sellers’ offers.
4. The average consumer would expect suggested Lush goods to be available and would not ascertain without difficulty that competing goods were unconnected with Lush. The use damaged the origin function and also damaged the advertising and investment functions.
5. The use of Lush under “Brands” did not infringe because it referred to genuine third-party Lush-branded products outside the claimants’ rights. The E-Commerce Directive defence was irrelevant to the claim ultimately advanced.
6. The defendants were joint tortfeasors. The first defendant was intimately involved in marketing, search optimisation, fulfilment and supporting the website’s operation. Those activities formed part of a common plan including the infringing acts.

The allegation of joint tortfeasance succeeded.