Lush Cosmetics defeated in trade mark dispute

Lush Cosmetics has lost a trade mark battle after its opposition to a logo mark applied for by food manufacturer, Tasty Snacks was denied.

Last week, the UK Intellectual Property Office (UKIPO) ruled that Tasty’s application for a red and gold mark, with the word ‘LUSH’ in white writing, for “snacks consisting of mixtures of nuts; crisps” can proceed to registration in the UK.

The application was opposed by Lush, which said it infringed its earlier trade marks protecting very different products which included perfumes, bath preparations, shampoo and creams. Lush argued that its marks “have a reputation in the UK and that Tasty’s new mark would cause the public to wrongly believe there is an economic connection between the two companies”.

Lush argued that the success of the company was due to its ethical principles which includes that its products have never been tested on animals, are vegetarian, handmade and ethically sourced goods.

Lush argued that by assuming a link between the two companies, consumers would have an expectation that Tasty’s goods should meet the same ethical standards of Lush’s products. It said “this will cause a detriment to Lush’s reputation through confusion”.

The UKIPO concluded that the link between Lush’s trade marks and Tasty’s mark is not strong as the “goods do not coincide in nature, purpose, channels of trade or method of use”. The IPO also stated that it is not likely that Tasty’s mark will have a negative effect on Lush’s earlier marks, nor will there be any detriment to the reputation of Lush’s trade marks.

The UKIPO rightly concluded that there is a difference between including edible ingredients in toiletries and the manufacture of foodstuffs. Tasty’s application will now proceed to registration in the UK. This decision highlights that two marks with the same name can still be registered if the goods are not identical or similar.

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