Who says Trademarks are boring?

By Keith Laker

My colleague Angela Adrian recently wrote about the ongoing battle between cosmetics company Lush and the mighty Amazon, in respect of the damage that keyword searches can do to a registered trademark.  The point was serious, but the battle between the two companies is proving entertaining in the extreme.  Vincent Teh of Kass International has provided perhaps the most succinct account of this David v Goliath battle:

“Lush, an independent cosmetics company in the UK, had applied to register the name of the UK boss of online retail group, Amazon, as a trademark for its new range of toiletries. This peculiar branding strategy is a result of a three year long feud between the two companies over the misuse of Lush’s trademark by Amazon. Lush had complained about latter’s use of the word “lush” to sell third party products that are similar to Lush’s. Lush claimed that consumers will be misled into thinking they were buying genuine Lush products when in fact they are not. After Amazon rebuffed numerous attempts by Lush to resolve the dispute amicably, Lush decided that as a joke, they would register “Christopher North” as a trademark. The dispute eventually went to the court and the case was recently won by Lush. However, Amazon, unwilling to admit any wrongdoing, is planning to appeal against the High Court ruling. Enraged by Amazon’s insolence, Lush decided to go ahead and sell a host of toiletries named after Christopher North, including shower gels, deodorants, toothpaste, hair removal wax and other non-medicated toilet preparations. Choosing to add salt and a touch of Tabasco to injury, Lush decided to add the tagline “rich, thick and full of it” to its shower gel within the Christopher North range”

Whether or not you admire Lush’s tactics, it does raise the question of what could Christopher North have done to prevent the use of his name as a registered trademark?  Well, he might have considered registering his personality under the Guernsey Image Rights Ordinance (‘IRO’), which potentially provides extremely broad-ranging protection against the infringement of personal image rights. However, in line with most IP legislation, the IRO permits various exemptions, including significantly in this case, parody.  Undoubtedly Lush’s choice of strapline (and other messages) on the said products parodied Christopher North, but did the registration of a trademark using his name and the subsequent marketing of those products stray too far towards ‘unauthorized economic benefit’?  Quite possibly so. Until someone brings a first test case to court under this new legislation, the boundaries will remain more esoteric conjecture than reliable precedent.  Mind you, if reliable precedent were to curb the entertainment currently being provided, some might consider that to be a shame.