Lush loses trademark battle with food manufacturer

On December 14^th 2018, the registrar ruled that Tasty’s application for a red and gold mark, with the word ‘Lush’ in white letters for “snacks consisting of mixtures of nuts and crisps” can proceed to registration.

The application to register the mark was filed on May 6^th of this year and was immediately opposed by Lush who stated ‘that it infringed on its company’s trademarks for products such as bath preparations, soaps, creams’ etc.

One of Lush’s main arguments was that it would cause confusion. Lush stated its marks “have a reputation in the UK and Tasty’s new mark would cause the public to wrongly believe there is a connection between the companies.” Lush felt Tasty was trying to take unfair advantage on Lush’s existing reputation, which could be ruined by Tasty, as consumers may expect the same standards that Lush have on Tasty’s goods. Lush‘s success is largely down to its compromises on its own principles for example no products being animal tested, 100% vegetarian products and ethical campaigns. These principles are what has made Lush so distinctive in character and therefore what they were trying to protect.

However in the IPO’s ruling the registrar concluded that the link between Lush’s trademarks and Tasty’s application was “not strong” as the “goods do not coincide in nature, purpose, channels of trade, or method of use.” They said there “may be a very superficial overlap in consumers, but the goods are different.” The registrar also said Lush’s allegation of “inferior quality is hypothetical and insufficient.” And it is not likely that the applied for trademark will have a negative effect on earlier marks, nor will there be any detriment to the reputation of Lush’s trademark. Lastly the registrar stated that they were “not persuaded that Tasty would gain an advantage through the use of its proposed mark.”

Tasty’s application will now proceed to registration.

This case is controversial because Lush is well established and so Tasty would have been perfectly aware of their reputation and the success they have achieved. By not allowing Lush to protect its character it sets a new precedent which could be the downfall for other successful companies.

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