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Amazon's display of rival products in search listings for trade marked goods was not infringing, rules US court


Amazon did not infringe on a watch maker's trade mark rights by displaying results for rivals' products when consumers had searched for the watch maker's trade marked goods, a US court has ruled.

California district court judge Dean Pregerson said that Multi Time Machine (MTM) had failed to show that the online retailer had created a likelihood of confusion (23-page / 66KB PDF) between its trade marks and marks belonging to rivals.

Under US trade mark laws businesses that claim that their trade mark rights have been infringed must show that the alleged infringer has used a mark "confusingly similar" to its own "valid, protectable" trade mark before further tests for infringement can be explored.

MTM had taken issue with Amazon's product listings that appear when consumers use the search function on the retailer's website. The watch maker sold "military style watches" under the brand names 'MTM Special Ops' and 'MTM Military Ops'. MTM did not sell direct through Amazon and did not authorise its distributors to sell its watches through the retailer's website either. It took issue when Amazon's search engine displayed lists of products made by rivals when consumers had used search terms containing its trade marks.

However, the US judge said that MTM had failed to meet standards laid out in US case law to progress its case to a full hearing. He therefore issued a summary judgment dismissing the company's trade mark infringement claims against Amazon.

The judge said that MTM's trade marks were "conceptually weak" because they were "at best suggestive, and more likely descriptive" terms and not particularly distinctive in nature.

He also gave greater weight to evidence supplied by Amazon about whether there had been "actual confusion" as a result of the way the retailer had displayed information about rivals' products when they had searched for watches made by MTM.

Amazon had presented evidence that showed that consumers were 21 times more likely to place an order for watches made Luminox, one of MTM's competitors, when they had searched specifically for Luminox goods than whey they had searched for MTM's trade marked products. Amazon said that this proved that there had been no actual confusion between MTM's trade mark and those of the watch maker's rivals. The judge backed Amazon's view on the issue after finding that MTM's president had failed to "present any specific instances or records of actual consumer confusion" to support his claims that there had been actual confusion over the marks.

The district court judge also reviewed the extent to which consumers had a 'degree of care' over the kind of purchases referenced in the case. Because of the "relatively high price of the goods in question" and the fact that consumers take an "increased degree of care" when making online purchases, the judge said that consumers in the case would be "presumed to use a high degree of care" when buying watches like those MTM sold through Amazon.

The judge also said that MTM had failed to show that consumers would have been confused as to who the sources of the products displayed in Amazon's search results were. He reached the view despite MTM claiming that the Amazon's display of search results was "ambiguous, misleading, and confusing". MTM, however, did not provide a link between that evidence and consumer confusion over product sources, the judge said.

Taking into account the factors he had considered, the judge ruled that "there is no likelihood of confusion in Amazon’s use of MTM’s trademarks in its search engine or display of search results".

"There could potentially be a likelihood confusion if the search results included products with marks that were substantially similar to the mark used as a search query,2 the judge added. "Here, however, the marks of the watches listed in the search results bear little if any resemblance to MTM’s mark."

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