Cosmetic Warriors Ltd & Anor v Amazon.co.uk Ltd & Anor

I handed down judgment in this action on 10 February 2014 and am now called upon to adjudicate upon the form of order. The parties have been unable to agree upon any of the matters of substance, in particular on the form of and territorial extent of any injunctive relief, upon the extent of any Island Records v Tring disclosure (relevant to the election of an inquiry as to damages or an account of profits), upon whether and if so in what form there should be an order for publicity of the judgment as an enforcement measure, upon the appropriate basis and order as to costs, upon whether the Claimants' costs should be reduced by reason of the fact that for a period an exclusive licence was not registered, upon the extent of any CPR 31.22 order in relation to alleged confidential information, upon whether there should be permission to appeal and upon whether there should be a stay pending any appeal.

Form of Injunction. I deal first with the form of the injunction. Mr Bloch QC, counsel for Lush, asked for a pan European general form of injunction against infringement contending it was the normal order and Mr Carr QC, counsel for Amazon, contended for a specific form of injunction which was limited in effect to the United Kingdom. Mr Carr contended that the appropriate wording was:

There are a number of observations to make about an order in this form. The first is that 1(a) is evidently aimed directly at the first class of infringements, an example of which is in paragraph 8 of my judgment in the action (the Judgment). Mr Carr told me that 2(a) was designed to ensure that the relief granted went no wider than that expressly found to infringe, that is to say, to exclude conduct which may or does infringe but in respect of which there has been no determination because the situation has not yet arisen and was not the subject of the trial.

The second observation is that 1(b) is evidently aimed at the three specific uses on the Amazon website which were complained of at the trial, and it qualifies the circumstances in which these uses are prohibited by making reference to the test for infringement proposed in Google France. Thus it does not include other infringing uses which Amazon might choose to adopt and it builds in factual criteria to be satisfied before the injunction will bite.

My third observation is that 2(b) is evidently aimed at expressly excluding from the injunction the circumstance where Amazon presents third party products as offerings to consumers who are searching for Lush cosmetics. I confess that I was a little surprised when I first saw this proposal since I had understood that a major part of Lush's complaint was that Amazon had been carrying out this very activity. Mr Carr, however, told me that this scenario had been dealt with in the Judgment, that his clients had succeeded on the point and that it was appropriate for this to be recorded in the form of order.

Mr Carr relied upon paragraph 58 of the Judgment. In that paragraph I dealt with the circumstance of a consumer typing the word Lush into the Amazon search engine and concluded that this activity by the consumer was not use of the mark Lush by Amazon. Mr Carr submitted that this conclusion had the consequence that any subsequent use Amazon might make of the input by the consumer of the word Lush into its search engine could not be an infringement and, furthermore, Lush were estopped by the doctrine in Henderson v Henderson (1843) 3 Hare 100 from contending otherwise.

With respect to the first part of this argument, it seems to me to be a complete non sequitur. Furthermore, in the pleaded examples before the court (which covered the acts which Amazon were known to have carried out), there was explicit use of the mark Lush on Amazon's web pages and it was not necessary for the court to consider and deal with whatever else Amazon might have been up to. Moreover, no reference was made by either party to these other activities.

With respect to his estoppel argument, Mr Carr submitted that it had been open to Lush to complain at the trial of a circumstance where a consumer types Lush into the Amazon search engine and Amazon merely returns offerings of third party products without reproducing the word Lush on its web page, and that it was now too late for it to allege such conduct could be trade mark infringement.

I do not accept this submission. The scenario of a consumer typing Lush into the Amazon search engine and thereafter Amazon merely returning offerings of third party products was not dealt with at the trial because it was not something that Amazon has ever done or has ever threatened to do or, as far as I am aware, has ever indicated that it had the slightest interest in ever wanting to do. It was not a scenario that Lush had any reason to anticipate, and no material has been put forward which might lead to the opposite conclusion. In my judgment, had Amazon wanted this hypothetical scenario investigated at the trial then it was incumbent upon it to raise it; that no criticism can be laid at Lush's door for its failure to plead and prove that such imaginary conduct, if put into effect, would be trade mark infringement.

Mr Carr urged upon me that such a scenario was very important to his clients and, on the assumption that I had not dealt with the matter already and concluded the matter in his favour, he asked me to deal in this judgment with whether or not Amazon would infringe trade mark in such a circumstance. He submitted that such a course was appropriate because it would have the advantage of enabling him to overturn my views in the Court of Appeal if they did not find favour with him. However, he did not put forward a specific example of a web page for my consideration and neither party addressed any additional argument on the point.

As I pointed out in paragraph 50 of the Judgment, there are really only two matters to consider in cases such as this: first is there use in the course of trade by Amazon of the sign Lush in relation to relevant goods when Amazon offers for sale alternative goods (being relevant goods) in response to a consumer who is searching for Lush goods and has typed Lush into the Amazon search facility, and, if so, second is the test set out in paragraph 84 of Google France satisfied given the nature of the response to such consumer input.

Despite having heard no argument addressed to this specific point, in my judgment, and following the reasoning in the Judgment (Footnote: ¹), the first matter is satisfied; that Amazon does use the mark Lush in the course of trade in relation to relevant goods when it takes the customer input of Lush and outputs an offering of its alternatives to Lush goods and, accordingly, is in a different position from, for example, eBay in the L'Oreal v eBay case. However, whether or not the second matter is satisfied requires consideration of the nature and content of the web page returned after the search. In the absence of any web page being put forward for actual consideration it seems to me to be quite impossible to reach a conclusion, furthermore quite inappropriate for me to try to do so. I do not think it would be fair on either Lush or Amazon for me to guess what Amazon might do and then make a judgment upon it.

Although I reject the specific form of injunction for which Mr Carr contends, I must still consider whether the correct form is the general form or something else. Amazon relied upon four main points. First it submitted that, because of the way it had designed its software, it was technically difficult to avoid infringement. It accepted that it could prevent the drop down menu from suggesting Lush products to persons typing in l, u, s ... and that it could prevent the 'Related Searches' line suggesting, for example, Lush Cosmetic Bath Bombs to consumers when no such products were available. It contended however that it did not quite know how to prevent its web page reproducing the word Lush (as a breadcrumb) above the offering of a range of products competitive to Lush products. It protested that it could not arrange for the site to return 'no results found' or similar, since it did legitimately offer Lush branded products such as Lush Hair Extensions, albeit not on the first few web pages. It urged that the technical feasibility of compliance with any injunction had an important impact on the form of the injunction.

I regard this as a fairly weak point. I am satisfied that Amazon has the expertise to do what is required if it wished, and that any shortcoming is because of its perception that the profitability of its site is the predominant criterion which should drive its efforts. Thus, for example, although there was evidence that it was currently technically difficult to prevent a web page returning the word Lush as a bread crumb, there was no evidence at all to the effect that Amazon could not deploy any one of the more conventional methods of informing a customer that the goods he was being offered were not Lush goods. It was clear to me that Amazon did not, for commercial reasons, want to do this, but that, in my view, rather misses the point.

Secondly it submitted that the relief sought by Lush would inevitably damage its business in the products of third parties which are legitimately marked Lush – giving Lush Hair Extensions as an example. It contended that the general form of injunction would, for example, stop Amazon displaying promotions for products such as 'Lush Hair Extensions' or 'Sweet Lush Baby Beurre', a skin cream by Mon Épris, in response to searches for Lush. I do not accept this. Moreover, if there is any effect on third party trade, it is because Amazon has persisted in presenting consumers with products which are not the Claimants' products in circumstances where the normally informed and reasonably attentive internet user is not enabled, or is only enabled with difficulty, to ascertain whether the goods originate from the Claimants or a third party. This, in my judgment, is not a good reason for not granting a general form of injunction.

Amazon also contended that the general form of injunction would erect barriers to legitimate trade as it will prevent the return of competing products in response to searches for Lush which, it was submitted, was wholly disproportionate given the court's findings on liability. This seems to me to be a rehash of the arguments put forward at trial. It also seems to invoke the mistaken notion that the Judgment should be interpreted as concluding that it is lawful in all circumstances to return competing products in response to searches for Lush so long as Lush is not used in a drop-down menu or related search line or similar.

Fourthly, Amazon noted that Lush, in a letter from its solicitors of 28 February 2014, had already misinterpreted the effect of a general injunction when, for example, it suggested what Amazon could and could not do in terms of its keyword advertising and what negative matching (Footnote: ²) it was required to perform. Mr Carr contended that this conduct of the Claimant was the best illustration of why the general form of injunction was disproportionate. However, this possible over-enthusiasm on Lush's solicitor's part does not in my judgment provide a sufficient basis for departing from the normal order.

A similar situation to that now before me was faced by Arnold J when it came to argument on the form of order in the Interflora case (see [2013] EWHC 1484 (Ch) at [14] to [30] where Arnold J's reasoning, citations from Court of Appeal authority, and conclusion are set out). A key matter to consider is proportionality and within that concept there is the question of whether or not the injunction may operate as a barrier to legitimate trade. Another issue is whether the injunction will cure or substantially cure the vice which has been demonstrated, that is to say, will be sufficiently effective in preventing further infringements.

In this case Amazon contended at trial that the relief sought went to the core of its business model, that it attacked Amazon's philosophy of offering the widest and best possible choice to its consumers and that it placed a fetter on those customers' rights and freedoms to be informed. In the light of that approach and in view of the way Amazon has approached the interpretation of my judgment to date balanced against the rights of Lush as well as those of various third parties, I think the correct exercise of discretion is to grant the injunction in general form, as contended for by Mr Bloch.

Territorial extent. Mr Bloch submitted that there was no justification for anything other than a pan-European injunction with respect to the CTM, that such was the norm and that was the end of it. Mr Carr disagreed. He pointed out that the trial had been concerned only with the operation of the UK site at www.amazon.co.uk and there was no justification for concluding any of the other sites in Europe were carrying out any infringing activity.

Mr Carr is correct that the trial concerned only the operation of the UK site and the finding of joint liability was specifically directed at responsibility for the content of and sales made through that site. Indeed I heard no evidence at all about the first Defendant's involvement, if any, in the operation of the businesses connected with other sites targeted at EU consumers. However, that seems to me to miss the point. I have found that the operation by the second Defendant of the UK site is an infringement of trade mark and concluded that such should be restrained by injunction. In my judgment that injunction should be effective throughout the EU, irrespective of which web site the second Defendant chooses as its vehicle for trade. There are no special circumstances in the present case (cf DHL Express France SAS v Chronopost SA (C-235/09) [2011] FSR 38, at [44], [45], [48] and Interflora v Marks & Spencer No 2 [2014] FSR 2, [32], [33]).

Island Records disclosure. The purpose of this disclosure is to provide sufficient information to a successful Claimant so that he can make a meaningful election between an account of profits and an inquiry as to damages. It should be proportionate to the exercise in hand and, in my judgment, no more than reasonably necessary to enable a choice of the right ball park. It should also be borne in mind that in many trade mark infringement cases, a trade mark proprietor is likely to know if the infringement has caused him a huge amount of damage, and he is also likely to have a good idea whether the infringement has enabled the defendant to make a lot of profit. Thus it will not often be proportionate to oblige a party to incur significant expense merely in the provision of disclosure solely for the purpose of enabling an informed election between these two alternative remedies.

Lush ask for an order in the following terms:

Amazon contend that this order goes far beyond what is reasonably necessary to make an informed election and I agree. Indeed, at the hearing Mr Bloch readily backed away from much of what he was originally seeking, making it difficult for me to reach a clear conclusion, using his proposal as a starting point, as to what his clients actually need at this stage of the proceedings. Where a party seeks very wide ranging disclosure (for election only purposes) and supports it with a witness statement, and then readily concedes he does not need much of it, it is not easy to reach a conclusion as to what is actually necessary.

Mr Carr reminded me of what was said in Brugger v Medicaid [1996] FSR 362 and, more recently in Vestergaard v Bestnet [2010] FSR 2 at [116]. He submitted that all that was required was the provision of information (in a witness statement) relating to (i) the number of infringing acts, (ii) the sums received as a consequence of those infringing acts and (iii) an estimate of the costs incurred together with (iv) an intelligible explanation as to how the estimate of costs was arrived at. In my judgment, this simpler approach is the more suitable one for this case.

Mr Carr's proposal was for an order in this form:

I do not consider this alone is sufficient since it does not include the sums received by Amazon by reason of the infringements (Footnote: ³). Mr Carr submitted that this information had already been provided to Lush, albeit in piecemeal form but I take the view that it would be better if the information were gathered together and presented in one place. So I will order that, in addition to the provisions in paragraph 26 above (as amended), Amazon provide details of the sales made and sums received as a consequence of infringing acts since 1 January 2009.

Neither does Mr Carr's proposal contain the equivalent of §§2a and 2b of Mr Bloch's proposal. I consider this information should be provided, but only from 1 January 2009 and at yearly intervals rather than quarterly as suggested by Lush.

Finally in connection with this aspect of the case, I turn to whether or not the figures provided by Amazon should be audited, as requested by Lush. There can be no doubt that auditing will add an additional layer of expense but Lush contend that the financial data disclosed to date has been incomplete, contradictory and opaque and in these circumstances such is justified. However, this kind of exercise should not, in my view, be over-lengthy or unnecessarily sophisticated, the object merely being the provision of sufficient information to enable Lush to make an informed election. I have no reason to believe that Amazon will not take proper care in providing the information which is being ordered and in these circumstances do not consider it proportionate to require Amazon to have the figures independently verified.

Publicity of the judgment. There are two matters to consider in this context, whether there should be any order for publicity of the judgment and, if so, the form and extent of that publicity.

The most recent guidance upon the relatively new phenomenon of publicity orders was given by Sir Robin Jacob in Samsung Electronics (UK) Ltd v Apple Inc [2013] FSR 9 at [69]:

Lush seek an order that the following notice is published in the national press (as a half page advertisement in the Times, Financial Times, Guardian, Telegraph, Independent and Daily Mail) and, together with hyperlinks to my judgment of 10 February 2014 and to the final order in the action, on the home pages of the web sites at www.amazon.co.uk, www.amazon.de, www.amazon.fr, www.amazon.it, and www.amazon.es and any other pages of such sites which are displayed as a result of an internet search by a consumer inputting the word LUSH (including misspellings thereof) and whether alone or in combination with any other word. In the case of the web postings, Lush seek an order that the notice be displayed above the fold (Footnote: ⁴) for two months from the date of this order and for the duration of November and December 2014. The Notice suggested by Lush is in these terms:

Amazon object to the form and content of this Notice as well as to the extent of its dissemination. It submits that Lush's proposal is out of all proportion to the damage which might have been caused by the infringement and to the aims of the Directive. It also contends that the Judgment has already received widespread publicity in the national press and that further dissemination is simply unnecessary. It says that posting the notice on its website will serve no more than to cause it embarrassment and that requiring a post both now and in the run up to Christmas is without precedent, extreme and unfair. With respect to the content of the notice itself, it contends that I have no jurisdiction under the Directive to require the posting of a notice to the effect that Lush cosmetics are not available upon Amazon, that there must be some other jurisprudential basis if a notice to such effect is to be ordered.

With respect to Amazon's submission that the Judgment has already received sufficient publicity in the national press not to warrant the placement of a further advertisement, I agree. There are in evidence details of the publicity which my decision has been afforded, some or much of which has been stimulated by activities of Lush. Accordingly, I do not think further advertisement in the national press is warranted.

However, I do not agree that the publicity which the Judgment has received is a sufficient reason for my concluding that there should be no publicity on any Amazon website; it is on those webpages that there will be most effective communication to the relevant public at large.

With respect to the content of the Notice and its publication on Amazon web pages, there are a number of points. First, I agree with Mr Carr that it is inappropriate in a notice publicising a judicial decision for the notice to contain commercial statements such as 'Lush Cosmetics are not available on Amazon', especially when the party obliged to place the notice objects to the inclusion of such statements. Moreover, although I am satisfied that the court has the power to order a party to advertise such statements in some circumstances, I am more than satisfied that it would not be a proper exercise of my discretion to order Amazon to do so in this case. As will be clear from the Judgment, Amazon has at its disposal various ways of avoiding infringement by satisfying the test in Google France. At this stage of the proceedings I do not think it is appropriate for the court to engage with the processes which it might choose to adopt.

Second with respect to the content of the notice, it is in my judgment far too long. Indeed, its length alone makes it unsuitable for inclusion on all the web pages where Lush would like to see it displayed. As I understand it, the object of the exercise is to publicise the decision rather than write a treatise about the proceedings. Mr Bloch agreed that the text was a bit verbose and eventually was satisfied with a notice in these terms: 'Amazon infringed Lush trade marks (Judgment)', where 'Judgment' is a hyperlink to a copy of the Judgment. He also accepted that an order for publication on a web site 'above the fold' was meaningless in the context of users' differently sized screens and that the font size of any notice was better given in relative terms than absolute font size.

With respect to the websites which should display the notice, I do not think there is sufficient justification for it being displayed on other than the www.amazon.co.uk site. That was the site which was the subject of the action and, although the injunctive relief extends to all sites operated by Amazon, I have no information about whether there has been infringing activity on other sites.

With respect to the pages on which the notice should be displayed, I do not agree that a case has been made for requiring Amazon to place a notice on its home page. Amazon sells a huge range of goods and it is likely to be the case that the majority of visitors to the amazon.co.uk home page have no interest in Lush goods at all. However, I do think the notice should appear on all pages which are returned in response to a search for Lush or a search term including the word Lush, and whether the page is returned as a result of the consumer typing Lush into the Amazon search engine or some other site. Thus it will appear on the Beauty page in response to a search for Lush, and on such other pages which Amazon present in the circumstances I have outlined.

As for location and prominence of the notice, I think it should appear towards the top of the page and in the same sized font as, for example, that used for 'Related Searches' in the web page shown in paragraph 12 of the Judgment. The word 'Judgment' should be displayed in the conventional way so that it will be perceived by the consumer as a hyperlink.

As for the duration of display of the notice, I think there is no justification at all for requiring a display during the months of November and December 2014. That will be almost 10 months after the Judgment and at a time when any infringement should have long ceased. Nor do I think it necessary for the display to continue for as long as 2 months. I think 1 month is adequate to satisfy the criteria set out in the Enforcement Directive.

Costs. Lush seeks its costs on the indemnity basis whereas Amazon contends that the proper order is no order as to costs. In addition, Amazon contends that in any event, Lush should be denied 50% of its costs by reason of section 25(4) of the Trade Marks Act whereas Lush contends that there should be no such reduction at all. So the parties were not close to agreement.

I deal first with Lush's application for costs on the indemnity basis. Mr Bloch accepts that such an order is usually only granted if the case is, for some reason, outside the norm, but he submits that this is such a case. He relies principally upon the content of a 'Without Prejudice Save as to Costs' letter of 13 January 2012 but also on the fact that, in the light of the established case law, it was unreasonable of Amazon to defend the adwords claim which included the word Lush in the sponsored ad. He also relies on Amazon's conduct generally.

With respect to the wpsatc letter of 13 January 2012, that letter sought an undertaking that Amazon prevent search results from being generated on its website from use of the search term 'Lush' which infringed Lush's rights although it did not specify what would satisfy it in that respect. It also sought an undertaking with respect to the adwords claim. It was in a form that would preclude it bidding on the term Lush, i.e. preclude it from carrying out one of the activities which I found in my judgment not to be an infringement of trade mark.

Mr Bloch accepted that his clients had not succeeded in every part of the case and, had not done as well as what had been demanded in the 13 January wpsatc letter. Nevertheless he submitted that his clients had substantially won and an order for indemnity costs was the only right order.

This aspect of the case is, to my mind, the easiest. I am satisfied that the facts do not warrant an order for costs to be assessed on the indemnity basis.

I am also easily able to reach the conclusion that Mr Carr is mistaken when he submits that no order as to costs is appropriate. However, Lush did not win on all the matters it argued and furthermore, in counsel's closing argument, it abandoned its case both in passing off and trade mark infringement under Article 5(2). I accept that there was some overlap in the presentation of the Article 5(1) case and those cases which were abandoned but there was not complete overlap and, in my view, it is not fair to oblige a party to pay the costs of a case made against it if that case has been abandoned or defeated and it is possible for the court to reach a reasonably clear conclusion about the extent of any additional expense incurred as a result of abandoned or defeated matters.

In addition to matters relating to the success on the issues, Amazon complained of Lush's conduct in the litigation which, it submitted, had been such as to drive up costs unnecessarily. Amazon complained particularly about unnecessary disclosure requests and extravagantly wasteful conduct in connection with a CEA Notice comprising some 2000 pages (occupying 4 lever-arch files) of documents, nearly half of which ended up in the trial bundles to be looked at by no-one except, possibly, the curious or those with nothing better to do.

Regarding the disclosure requests, these included two applications for specific disclosure which Amazon contend caused it to incur costs of £50,000 and the documents disclosed were either not relied upon by the court or not included in the trial bundle. Mr Carr submitted that, although the court dealt with the costs of those disclosure applications by making the order of 'costs in the case', an order now of 'no order as to costs' would avoid injustice. That however does not seem to me to be the right approach. Not only is it setting one discrete aspect of the case against all of the rest, it is attempting to go behind the consequence of orders which have already been made.

Having considered all matters and in particular the fact that Lush did not succeed with one of its complaints and abandoned some of its causes of action in respect of those complaints where it did succeed, I think the appropriate order is that Amazon pay 90% of Lush's costs to be assessed on the standard basis, and subject to the section 25(4) point to which I now turn.

Section 25(4) of the Trade Marks Act 1994, as currently in force, is in these terms:

Mr Bloch's argument was straightforward. He submitted that the extra costs of the action incurred by reason of the second Claimant being party to the action were trivial and the first Claimant should, therefore, be awarded all the costs of the action. Furthermore he said that 100% of the costs were actually incurred by the first Claimant, the trade mark proprietor, that there was no justification for a discount in those costs and accordingly the first Claimant should recover all the costs. In effect, for the purposes of section 25(4), Mr Bloch was treating the matter as if the second Claimant licensee had not been a party to the action at all.

Mr Carr's argument was equally straightforward. He submitted that because registration was outside the 6 month period prescribed and no good reason had been shown for such, the section operated to deny half of the Claimants any entitlement to costs with the consequence that the Claimants should be awarded only 50% of whatever costs they would be entitled to had the provisions of section 25(4) been complied with. He submitted that otherwise the section would be rendered toothless, and that cannot have been what was intended. He also argued that Mr Bloch's submission, that since the trade mark proprietor was responsible for 100% of the costs he should get them, could not possibly be right as that, too, would drive a coach and horses through the section.

Mr Carr drew my attention to what he said was the not dissimilar provision in section 68 of the Patents Act (Footnote: ⁵) and its interpretation by the Supreme Court in Schutz v Werit [2013] RPC 16. That was a case brought by the exclusive licensee of a patent, the proprietor having been joined as a Defendant, pursuant to section 67(3) of the Patents Act, and taking no active role in the action. At [100] Lord Neuberger, in a passage which he noted was, strictly speaking, obiter said this:

I have some difficulties and they are these. In Schutz v Werit the patentee was joined as a Defendant and took no part in the proceedings whereas here the trade mark proprietor was Claimant and took a full part, indeed there has been no need to distinguish between the two Claimants for this part of the action. Secondly, my understanding of this action is that it is primarily to secure injunctive relief to protect the function and integrity of the Lush trade mark, rather than about recovering damages or profits, particularly damages or profits prior to registration of the licence in late 2011 (sums which Amazon has contended are likely to be very small indeed). The case for injunctive relief depends almost entirely upon what has happened subsequent to registration and, at this stage of the action where only liability has been determined, it is to some extent incidental that Amazon's infringements date back to a period prior to registration. Indeed, if I were to make any deduction from Amazon's liability to pay it would be a penal measure as far as Lush are concerned and a fortuitous windfall as far as Amazon are concerned.

In these circumstances, and assuming that the purpose of section 25(4) of the Trade Marks Act is similar to that of section 68 of the Patents Act (Footnote: ⁷), I do not consider it right to deprive the Claimants of any costs by reason of the provisions of section 25(4). The position, however, may well be different when it comes to costs of any inquiry or account in respect of pre-registration activity.

Interim payment. The parties are agreed that there should be an interim payment, Mr Bloch asking for 65% of his bill to date and Mr Carr conceding that at least 50% would be in order, both parties accepting that the bill has to be discounted to the extent that Lush does not get an order for payment of all its costs. I have not seen the bill which has been prepared but the parties are content for me to decide upon a % figure which should be paid. In these circumstances and bearing in mind the guidance in the authorities, I think there should be an interim payment of 55% of 90% of Lush's bill.

A CPR 31.22 order. During the course of the proceedings and at trial some documents were disclosed which Amazon contends are confidential and it seeks an order pursuant to CPR31.22 to preserve that confidentiality (Footnote: ⁸). In addition I heard some evidence in private about Amazon's affairs and Amazon seeks to preserve that confidentiality. Lush opposes Amazon's application in part.

The approach of the court to orders under CPR 31.22 was considered by the court of appeal in Lilly Icos Ltd v Pfizer Ltd (No2) 2002 EWCA Civ 2, [2002] 1 WLR 2253, per Buxton LJ:

The parties were agreed that there are three classes of documents to be considered. Amazon was content to adopt Lush's categorisation which was as follows:

Lush does not oppose a CPR 31.22 order in relation to the Class 1 documents. I understand it to be agreed that these are to be found in trial bundles H1 and H6 – H9/43. I have looked briefly at the content of these documents and the explanation of them given in evidence and agree that they should be the subject of an appropriate order.

With respect to Class 2, Amazon includes within this class the closed transcript during cross examination of Mr Shipley where certain Class 2 documents were put to Mr Shipley and I will adopt that position (Footnote: ⁹).

There are two sub-categories of the corporate documents:

The bulk of the corporate documents are in the first sub-category. As I understand the position, these documents were originally disclosed in redacted form and Lush made an application with respect to those redactions. On 11 October 2013 Birrs J. ordered all the unredacted documents in the class be disclosed to Lush's solicitors and counsel only, who could take a view as to whether the redactions should remain. I do not know whether any view was taken save that Lush's solicitors included all the unredacted documents in the draft trial bundles. Amazon objected and the documents were replaced with a single document which stated 'Tabs 44 to 68 omitted pending an application by the Claimants for their inclusion in the Trial Bundle'. No such application was made and, apart from 3 documents to which I will return, the contents of H9/47 to 68 did not make the trial bundles and did not come within CPR 31.22(1)(a), even in redacted form. Nor has the court given any permission under CPR 31.22(1)(b).

In these circumstances the first sub-category of the Class 2 documents are already covered by CPR 31.22(1) and no further order is needed.

The second sub-category consists of three documents (H9/44-46). These were originally disclosed in redacted form but unredacted copies were provided to Lush's solicitors and counsel only pursuant to the order of Birrs J. During the trial Mr Bloch indicated a wish to cross examine Mr Shipley on the content of these documents and, for convenience and the smooth running of the trial at the time, that cross examination took place in private with suitable pro tem orders to maintain confidentiality. I indicated that I would deal with the substance of any confidentiality point at an appropriate time.

During cross examination Mr Bloch made clear that, although unredacted copies of the documents were being used, he was not interested in and was not going to refer to the figures (being the subject matter of the redactions). The unredacted versions of these documents are subject to the confidentiality order of Birss J and any reading by the court of the redacted parts was in private and no more need be said about it.

Accordingly it is the redacted copies of these documents and the cross examination of Mr Shipley in relation thereto which are the subject matter of Amazon's application.

Amazon submits that these three documents are confidential and contain commercially sensitive material. It points out that both the Public Accounts Committee and HMRC have reviewed them and agreed to keep them confidential. Amazon also submits that it is not necessary for the documents to be made public in order for justice to be done, that my judgment can be properly understood without reference to these documents. Amazon also relies on the order of Birrs J. Moreover, it contends that there is a real risk that Lush is seeking to make these documents public for a collateral purpose and that, unless I make a CPR 31.22 order, such is likely to happen.

Lush attacks Amazon's submissions and suggests Amazon is trying to hide these documents from the public glare to mitigate its embarrassment. Lush submits that the manner in which the Public Accounts Committee and HMRC treated the documents is irrelevant, that the documents are not innately confidential and that the order of Birrs J is irrelevant since it only applied to the documents in unredacted form. Its main submission, however, is that the documents shed light on the relationship between the two Defendants which, in the context of the issue of joint tortfeasance, was an important issue at trial.

I have re-read the transcript of the cross examination of Mr Shipley by Mr Bloch and considered again the content of these three documents in the light of the issues in the action and the guidance given in the authorities. I am far from satisfied that it is appropriate to make a CPR 31.22 order in relation to the redacted copies of the documents put to Mr Shipley or that the cross examination of Mr Shipley by Mr Bloch disclosed any confidential information which requires the protection of the court, requires a departure from the normal rule of open justice.

With respect to Class 3, this concerns the transcript of evidence given by Dr Fliedner concerning a ranking procedure being assessed by Amazon in connection with the search results displayed on the Amazon website. At the time the evidence was given Amazon asked for it be kept confidential and, for convenience, a pro tem regime was set up for that purpose. I now have to consider whether it is appropriate for a confidentiality order.

Amazon contend that this evidence merely complements the technical information within the search function Process Description and accordingly should be classified and dealt with in exactly the same way as documents falling within Class 1. It submits that the information is proprietary and is undeniably commercially sensitive. It also submits that there is a potential patentablity in the USA of its search function as a business method, although there was no evidence about that. Finally, Amazon submitted that the information is not material to the public's understanding of my judgment and did not have much significance in my determination of liability.

It is not possible fairly to set out Lush's submissions concerning this class without revealing the nature of the information which Amazon seek to keep secret. Suffice it to say that it rejects the notion that the information is similar in nature to that contained in the Class 1 documents, points out that it is not technical information at all and contends that Amazon is merely seeking to keep from its customers information about how it selects which products to return in response to search inquiries.

I am satisfied that the information in question is not properly characterised as technical information.

I was not impressed by Amazon's assertions with respect to the possibility of patenting of business methods in the USA. The content of the relevant information itself does not lead me to think that there is a real point in this respect. Moreover, had the point been of genuine substance, I would have expected it to have been explained in evidence so that I was in a better position to assess it for what it was worth. There was no such evidence.

Moreover, an important part of Amazon's case at trial was that its search engines had been devised and were operating so as to benefit the consumer by providing results which offered practically useful choices and that they placed the consumer in better position to enjoy the benefits of technology and what it can offer. I was urged to (and did) bear concepts such as this in mind when striking the balance between the rights of a trade mark proprietor and those of a consumer.

As part of the factual basis for this submission I was given non-confidential information about the Behaviour Based Search functioning of the Amazon system. The part of the evidence which Amazon seeks to keep confidential bears upon this submission and, in my judgment, a fair overall picture of the position will be hidden if this material is not as available to the public as the other material which has been openly disclosed.

In conclusion and in addition to accepting Lush's contentions with respect to this part of the case, I am satisfied that Amazon has no sufficient justification for maintaining confidentiality over the evidence given by Dr Fliedner on the Class 3 matter.

Permission to Appeal. Mr Carr asks for permission to appeal contending that I am wrong in my conclusions with respect to the operation of the search function and displays on the Amazon web site and that it is either acte claire that such is so or, if the Court of Appeal does not agree, he will be asking for a reference to the European Court of Justice to set matters right. He also said that the case involved complex issues of trade mark law in the context of online search engines and the consumer marketplace. He submitted that the appeal had a real prospect of success and that the extent of the commentary generated by the Judgment (including in the legal press) indicated that the case was of great importance with wide implications, and that constituted a compelling reason for an appeal. He was, however, unable to show me any commentary to the effect that my decision was wrong.

Mr Bloch submitted that permission to appeal should be refused and that the case involved no more than the application of what are now established legal principles to a particular set of facts. He reminded me that the Court of Appeal had become increasingly reluctant to engage in revisiting the findings of fact of a first instance judge.

I think Mr Bloch's characterisation of this action is the correct one and I refuse permission to appeal.

Amazon also sought permission to appeal any refusal of the CPR 31.22 order which Amazon requested. It pointed out unless permission is given or a stay pending appeal is granted, the subject matter of any appeal will be destroyed.

I do not think it appropriate to grant permission to appeal my refusal to grant a CPR31.22 order in the extent to which Amazon requested. I consider the matter to be clear on the facts and no points of law arise. If Amazon request and the Court of Appeal grant permission to appeal, then I will continue the current regime pending the appeal so as not to vitiate the subject matter of the appeal.

Stay. The parties are agreed that there should be a stay of my order (including any order granting or refusing a stay pending appeal) pending the determination of any application to the Court of Appeal for permission to appeal or the expiry of the time for making such an application.

With respect to the position generally, Amazon sought a stay of the injunctive relief, a publicity order (if any) and a stay of the inquiry or account once an election had been made. I have already dealt with a stay with respect to the CPR31.22 order.

Mr Bloch submits that there should be no stay of any of the provisions of my order. He relies upon the fact that the action has been determined and that his clients are entitled to the consequent relief.

Stay of injunction. With respect to the stay of any injunctive relief Mr Carr relies upon the fact that Amazon has already implemented certain changes to its internal search system such that: a) lush no longer appears in 'Related Searches', (b) a list of 'lush+variant' search items has been blacklisted so that they no longer appear in the drop down menu in 'All Products Search', (c) lush (alone or in combination with other terms) no longer appears in the drop down menu in Beauty or Health and Personal Care departments, and (d) 'lush' alone or in combination with other terms is no longer suggested in response to misspellings in the Beauty or Health and Personal Care departments.

Mr Carr submitted that what Amazon had done went further than would be required under the injunctive relief his clients proposed, and even this would have an adverse effect on third party traders using the Amazon web site. With respect to the bread crumb use, he said that the software had not yet been developed so as to provide a suitable technological block and that this was a further reason for requesting a stay.

It is accepted that if there is to be an appeal against a judgment, the question of whether or not there should be an injunction pending appeal is to be determined applying the 'balance of convenience principle' as explained by Buckley LJ in 3M v Johnson [1976] RPC 671, 676 (see Virgin Atlantic v Premium Aircraft [2009] EWCA Civ 1513. See also Samsung v Apple cited hereinbelow).

The matters which impress me here are a) Lush has established liability by the application to the facts of what I consider to be now well established law, b) Amazon has made some changes to its website but, to my mind significantly, has done nothing to the content of its web pages to address the Google France test other than to remove some explicit references to Lush. Moreover, it has not put forward any evidence to the effect that making clear to consumers that the products it returns, in response to searches for Lush, are not Lush products is something that it would be difficult or problematic for it to do. I infer that the reason that no such evidence has been put forward is that such would be easy to do but that Amazon would prefer not to do it, would prefer its customers to try and work out the true position for themselves (and if they fail so to do, then that is the customer's problem, not Amazon's). Whatever be the correct inference, it cannot be the case that putting the injunction into effect pending appeal will damage Amazon in such a way that there will be no appropriate remedy if it succeeds on appeal, and c) the damage of which Lush complains in the action is of the kind which is very difficult to quantify and very difficult to repair. For these main reasons, and subject to Lush providing a suitable cross undertaking in damages, I refuse the stay of injunctive relief.

Stay of publicity order. In Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 1223, the Court of Appeal considered the principles to be applied when seeking a stay of a publicity order pending appeal. At [34], [35] Kitchin LJ said this:

In this case I have ordered that Amazon publish a statement on its website for a certain period, which period will have expired before there is any likelihood of a hearing before the Court of Appeal. In these circumstances, and bearing in mind that the decision has already attracted some publicity in the national press, in the exercise of my discretion I grant a stay of the publicity order pending appeal if the Court of Appeal grants permission to appeal the Judgment.

Stay of inquiry or account after election. It seems to me that if Lush wish to proceed with its enquiry or account after it has made its election then it should be free so to do. It will be at risk as to costs if the appeal succeeds but that is a risk which I consider it should be free to take.

General stay. Subject to the stay of my order pending the determination of any application for permission to appeal, as already mentioned, I do not consider it appropriate to order a stay of any of the other provisions of my order. I hope that counsel will now be able to agree a form of order.