One can always see a lot of advertisements, while performing a google search or just about any search on other search engines. Advertisements, and more recently, keyword advertising are a major source of revenue generation for search engines. The case that we are about to discuss, is something that nobody ever anticipated to happen.
Multi Time Machine Inc, (MTM) manufactures watches, specifically special ops watches and high-end tactical watches. It sells them on its own website and through its various distributors. MTM has registered trademarks for its various products. MTM did not and to this day, does not make its products available for sale in any of the online shopping websites including Amazon.
MTM filed a suit against Amazon before the US District Court in April this year when MTM realized that, a keyword search of “MTM Special Ops” in Amazon resulted in a list of similar watches, i.e. Chase-Durer watches. The company saw this as infringement of MTM’s registered trademark and sought remedy from the court.
Since likelihood of confusion is an essential ingredient of the Trademark infringement, the same test has been followed in the present case. In the present case, MTM claimed that, Amazon was using MTM’s Trademark in commerce in a manner that was likely to cause confusion to the average consumer as to the source of the goods being bought.
The lower Court had ruled that there was no infringement, as there was no consumer confusion. However, on appeal, the 9th Circuit ruled that the jury could decide that Amazon had created a likelihood of confusion under an “initial interest confusion” theory by responding to a search request and found that Amazon did not clearly disclose that it did not sell MTM Special Ops watches.
The Court considered eight non-exhaustive factors, known as the Sleekcraft factors, to determine whether a trademark use gives rise to a likelihood of confusion: (1) strength of the mark(s); (2) proximity or relatedness of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels; (6) degree of consumer care; (7) the defendants’ intent; and (8) likelihood of expansion. The court, found that apart from the three Sleekcraft factors- similarity of marks, marketing channels, and likelihood of expansion, other factors appear to weigh in favor of finding of a likelihood of confusion.
However, according to the dissenting opinion of one of the judges, Amazon’s search result clearly labeled the name and manufacturer of each product offered for sale and even included photographs of the items, no reasonably prudent shopper accustomed to shopping online would likely be confused as to the source of the products.
The decision is left to be made by lower court, once again.
Thus keyword advertising can raise issues of possible trademark infringement, as the keyword triggering the appearance of an advertisement may be the trademark of a business other than that featured in the advertisement. The newly emerging form of potential trademark infringement has been the subject of a series of trade mark infringement cases in the US and Europe.
Authored by Sambhabi Patnaik
Contributed by Trade Mark Attorneys of BananaIP, India
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