On December 14th 2018, the registrar ruled that TastyÂs application for a red and gold mark, with the word ÂLushÂ in white letters for Âsnacks consisting of mixtures of nuts and crispsÂ can proceed to registration.
The application to register the mark was filed on May 6th of this year and was immediately opposed by Lush who stated Âthat it infringed on its companyÂs trademarks for products such as bath preparations, soaps, creamsÂ etc.
One of LushÂs main arguments was that it would cause confusion. Lush stated its marks Âhave a reputation in the UK and TastyÂs new mark would cause the public to wrongly believe there is a connection between the companies.Â Lush felt Tasty was trying to take unfair advantage on LushÂs existing reputation, which could be ruined by Tasty, as consumers may expect the same standards that Lush have on TastyÂs goods. LushÂs 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 IPOÂs ruling the registrar concluded that the link between LushÂs trademarks and TastyÂs application was Ânot strongÂ as the Âgoods do not coincide in nature, purpose, channels of trade, or method of use.Â They said there Âmay be a very superficial overlap in consumers, but the goods are different.Â The registrar also said LushÂs allegation of Âinferior quality is hypothetical and insufficient.Â 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 LushÂs trademark. Lastly the registrar stated that they were Ânot persuaded that Tasty would gain an advantage through the use of its proposed mark.Â
TastyÂs 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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