Lush Cosmetics has won its high-profile trademark battle with Amazon, with the High Court ruling against the retail giant’s use of the word ‘lush’ in its search marketing.

Insider Media covered the story,

The cosmetics business, which is headquartered in Poole, took legal action against Amazon.co.uk and Amazon EU after complaining that the retailer was infringing its trademark.

Lush does not permit its cosmetics to be sold on Amazon.

However, visitors who typed ‘lush’ into the search box on its website were shown products by rival companies. Amazon also ran a Google AdWords pay-per-click marketing campaign showing alterative cosmetics for keywords featuring the word ‘lush’.

The High Court decided that the average consumer would not be able to ascertain that goods identified by Amazon’s online search results were unconnected to Lush.

TheLawyer.com covered it saying,

The fight was particularly vicious due to Lush’s high-profile contempt for Amazon’s business practices – the company refuses to sell its products on Amazon’s site because of its attitude to UK tax, among other things. The court heard that it refused to sell on Amazon as it felt the decision would damage its ethical brand.

Baldwin QC said: “Lush is a successful business which has built up an image of ethical trading. This is an image which it says it wishes to preserve and it has taken the decision not to allow its good to be sold on Amazon because of the damage that it perceives there would be to that reputation.”

We have seen these disputes before and the decision went the other way, TechDirt wrote in July 2013 about 1-800 Contacts Vs Lens.com

With this list in mind, you can see why I hate the 1-800 Contacts v. Lens.com lawsuit. 1-800 Contact has spent enormous amounts on legal fees—at least $650k as of 2010–pursuing Lens.com for competitive keyword ads that had generated $20 in profit for Lens.com (no, that’s not a typo) and, at maximum, a few tens of thousands of dollars in revenue for Lens.com affiliates. All of this litigation is predicated on the initial interest confusion doctrine, an overly amorphous doctrine that no one can define or find any scientific support for, and which has been has been a loser in court for many years. To top it off, 1-800 Contacts had hypocritically engaged in competitive keyword advertising itself.

After 6 years in court, the case isn’t over yet. This week, the Tenth Circuit affirmed most of the district court’s opinion and emphatically rejected most of 1-800 Contacts’ lawsuit against Lens.com for the competitive keyword advertising it and its affiliates did. However, a small issue got remanded for a jury trial, so the parties will get the pleasure of wasting many tens of thousands of dollars more to conduct the jury trial unless they can finally find a way to settle. Hooray for litigation that create massive deadweight social losses!

Eric Goldman wrote on Forbes in March 2013,

More Confirmation That Google Has Won the AdWords Trademark Battles Worldwide

I’ve repeatedly asserted that the trademark battles over keyword advertising are near the end.  As further evidence of that, this week Google ($GOOG) liberalized its international trademark policy for advertising via AdWords.   Previously, Google allowed trademark owners to block advertisers from bidding on their trademarks in Australia, Brazil, China, Hong Kong, Macau, New Zealand, South Korea, and Taiwan.  Now, Google has reversed its policy in those countries, meaning that (as Google told me) “Google will no longer restrict advertisers from bidding against trademark keywords, worldwide.”  (Google had previously liberalized its trademark policy in most other countries in 2010).  Google will maintain regional differences in restrictions on when trademark owners can block their trademarks from appearing in the ad copy.

Amazon had another case which Eric Goldman covered in February of 2013 for Forbes,

Amazon’s Merchandising of Its Search Results Doesn’t Violate Trademark Law

MTM sued Amazon for trademark infringement.  Note that this is not a typical trademark lawsuit, where a trademark owner sues a competitor for copying its trademark too closely.  Instead, this is a trademark owner-vs.-retailer lawsuit for merchandising competitors’ items.  Trademark law wasn’t built to handle lawsuits like this, and the typical multi-factor test courts use to evaluate consumer confusion doesn’t make sense when applied to litigants at different levels of a distribution chain.