28/10/2015

Amazon has escaped trademark infringement last week after the 9th U.S. Circuit Court of Appeals in San Francisco did a backflip on its decision back in July 2015 in a fresh hearing that Amazon asked for. In doing so, the court affirms the ruling by the lower court in Amazon’s favour. It is extremely rare for a court to reverse its own ruling.

Multi-Time Machine, Inc. (MTM) makes high-end military style watches, including ones that were originally manufactured exclusively for US Special Forces. Their watches are right up your alley if you are looking for a watch forged from a single block aeronautical-grade titanium.

Here is what you need to know:

The dispute is over Amazon’s search function

MTM claimed that this infringed on their trademark because of the manner that Amazon responds to a search result for their trademarked watches.

MTM Special Ops watches are not sold on Amazon, but when a user inputs search request for their watches, Amazon prompts the user with “MTM Special Ops” in the search field. Further, it generates 10 results that are aesthetically similar watches from MTM competitors.

MTM asserts that Amazon’s use of MTM’s trademark name confuses the shopper that MTM has a relationship with the competitors.

Clarity in the search

It was held that MTM did not sufficiently show that there was actual confusion by the shopper. Using an analogy by Justice Silverman in the first hearing, if someone orders a Coke, and the diner says that they don’t carry Coke, only Pepsi, the diner would not be infringing on Coke’s trademark.

The results in Amazon sufficiently generated photographs of other brands of similar watches, specifically identified by their brand name.

You can see the full judgement here.

Let us know what you think by tagging us @lawpath and/or #lawpath.

Find out more about trademarks here, and about IP Australia’s Trademark Facelift.

Want to get trademark protection for your brand? Start here or give us a call on 1800 LAWPATH.

Dominic Woolrych

Dominic is the CEO of LawPath, dedicating his days to making legal easier, faster and more accessible to businesses. Dominic is a recognised thought-leader in Australian legal disruption, and was recognised as a winner of the 2015 Australian Legal Innovation Index.