NEWS Amazon to appeal against Lush ruling


Amazon is to appeal against a High Court ruling that it infringed trademarks belonging to cosmetics company Lush.


Te online retailer was accused by UK-based Lush of returning results for ‘Lush’ in its search engine despite not selling any of its products.


Lush also claimed that, through the use of Google AdWords, someone searching for ‘Lush bath products’ would be


redirected to the


Amazon website and would be shown alternative products.


Issuing the judgment at the UK High Court in February, Judge John Baldwin found that


the


average consumer would generally not realise that the goods from Amazon’s search results were “not the goods of, or connected with” Lush.


Judge Baldwin added: “Te right of the public to access technological developments does not allow a trader such as Amazon to ride roughshod over


IP 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.”


An Amazon spokesman confirmed to TBO on February 20 that it was planning an appeal.


In August last year, sister publication WIPR reported exclusively that Lush had filed a complaint. Te case was heard in December.


Te dispute has similarities with the Interflora v Marks & Spencer High Court ruling in May last year.


Mr Justice Arnold found that retailer Marks & Spencer’s use of ‘Interflora’ Google AdWords that produced search results for its flower delivery services did infringe trademarks belonging to an existing flower delivery company of the same name.


Originally set up in 1994, Lush now operates more than 800 stores in 51 countries. It produces and sells handmade cosmetic products, including soaps, shower gels and shampoos.


Facebook hit with “trademark bullying” claim


A pet-themed social network has accused Facebook of being a “trademark bully” aſter a dispute over the ‘Facepets’ trademark.


Facepets.com, based in Nashville, is also seeking clarification that it does not infringe Facebook’s trademarks.


Te company, whose site allows users to discuss and post pictures of their pets, applied for the ‘Facepets’ trademark in the US last year.


Aſter the trademark was published in August 2013, Facebook asked the US Patent and Trademark Office (US PTO) to extend the deadline for opposing the mark until December 25. Te request was granted.


Between August and the December deadline, Facebook contacted Facepets.com and claimed that the ‘Facepets’ mark would cause confusion with Facebook’s. Te social network told Facepets.com that it should abandon the trademark.


Counsel for the two companies later agreed that Facebook could have until February 23 to oppose the ‘Facepets’ mark.


Facepets.com filed the claims in a lawsuit at the US District Court for the Middle District of Tennessee.


Facebook has since opposed the mark at the Trademark Trial and Appeal Board (TTAB), but


www.worldipreview.com


the papers were filed on February 24, a day later than the agreed deadline. In


its opposition, Facebook claimed that


‘Facepets’ is likely to cause confusion and dilute its “famous” trademarks. To show that its marks are “famous”, Facebook argued that they enjoy a high degree of consumer recognition and that its service has an “enormous and loyal user base”.


In its suit, filed before the February 24 opposition, Facepets.com is seeking clarification that it does not infringe or dilute Facebook’s trademarks and that the social network is a “trademark bully”, a term used to describe companies that use their rights to harass other businesses.


TTAB papers show that Facepets.com has until April 5, 2014 to respond to the opposition.


Both the lawsuit and the TTAB case can proceed simultaneously,


Birch, Stewart, Kolasch & Birch LLP.


“Te types of facts that a court would look at are broader and the remedy is different—in the TTAB the remedy is whether the mark should be registered, and in the court it is whether the mark can be used in commerce.


“Because those are so different, there is not a circumstance that would warrant staying one of the proceedings,” he said.


said Bob Kenney, partner at


Given that Facepets seems to be a small, local group in Nashville, said Kenney, it could seem that Facebook is aggressively pursuing that group in an unwarranted way. On the other hand, he said, Facepets has applied for a trademark that would give it nationwide rights, so Facebook “would have to do something to ensure that that didn’t become a nationwide registration”.


“Te issue in trademark law is not just confusion as to source, but also confusion as to affiliation or sponsorship, so it’s very possible that someone seeing the Facepets site (and trademark) might think that although it’s not Facebook itself, it’s very possible that


they are affiliated with, or sponsored by, Facebook,” Kenney said.


Bone McAllester Norton PLLC is representing Facepets.com and Cooley LLP is acting for Facebook. Neither firm responded to a request for comment. 


Trademarks & Brands Online Volume 3, Issue 1 7


Since the judgment, Lush has announced it acquired a trademark in 2012 for a new range of toiletries branded ‘Christopher North’, the name of Amazon’s managing director.


Lush did not respond to requests for comment.


Lush was represented by Lewis Silkin LLP while Amazon was represented by Edwards Wildman Palmer LLP. 


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