17 February 2014

Making your mark: how you can fight big business for your IP and win

Litigation is seldom a level playing field, but this month there have been two heart-warming tales of triumph in the face of adversity.

First up we have Lush, purveyor of bath bombs and other "fresh handmade cosmetics," taking on the might of Amazon to protect its trade mark rights.  

Lush has never made its products available for purchase on Amazon's UK website, a conscious decision motivated by what it perceives as a gap between the ethical and environmental standards of the two companies.

However, despite this Amazon used the trademarked term "Lush" as a Google keyword, so that consumers searching for Lush products were presented with Google ads linked to competing products for sale on amazon.co.uk. Critically Amazon also used the word "Lush" in the text of some of the ads  (e.g. "Low prices on Lush soap").

And on the Amazon UK website itself, users searching for "Lush" were again presented with a range of competing products in circumstances in which it was unclear whether those products were produced by Lush or not.

Notwithstanding the disproportionate firepower of the parties, Lush scored a resounding victory: Amazon's visible use of Lush's trade mark amounted to trade mark infringement which Lush was entitled to restrain. To add insult to injury, Lush has even registered the name of amazon.co.uk's managing director Christopher North as a trade mark, which, it says, it intends to use on a shower gel together with the slogan "rich, thick and full of it".

Then there is Comic Enterprises Limited, owner of The Glee Club comedy and music venues in the UK, as well as a trade mark of the same name. In the face of customer confusion as to whether the clubs were anything to do with the hit US TV series glee (yes, it is always written in lower-case apparently), Comic Enterprises took on the might of Twentieth Century Fox Film Corporation ... and won.

In the process, Comic Enterprise's mark was partially revoked: in particular it lost that part of its registration relating to clothing for non-use. But the registration in its surviving form included "presentation of live shows," "cabaret entertainment" and "provision of live and recorded music," and that, and the similarity of the marks themselves, were sufficiently confusing to lead to a finding of infringement. Whether this judgment will lead to the TV show having to be rebranded in the UK or just to the curtailment of the show's promotional activities (notably live shows and spinoff soundtracks) remains to be seen. But - subject to any appeal - it is a significant victory nonetheless.

Taking on a much bigger adversary requires courage, resolve and a degree of financial commitment. But what these two cases show is that, at least as far as IP is concerned, size isn't everything.

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