In yet another interesting tussle between retailers who chose not to opt for a particular e-commerce portal and the inevitable, may be, unintended results of the internet search yielding trademarked goods in the results page, the United States Court For Appeals for the Ninth Circuit (CAFC) put forth its views on initial interest confusion, possibility of confusion, intention to confuse and infringement.
In Multi time Machine v. Amazon Inc, decision dated 21-10-2015, the CAFC reversed its earlier decision and held that there was no infringement of the trademark (of a manufacturer of watches) when other brands along with proper labelling appeared in the search results. The manufacturer of MTM Special Ops watches alleged infringement by the online retailer because though its products were not, when a person searched for the watch, other products were displayed. Certain other retailers specifically informed the user that the search did not yield any result. The trademark owner thus argued that by not informing the user about non-availability of the specified goods and instead displaying other goods, the online retailer was creating confusion. A user may presume that the goods displayed were probably of the trademark owner or having set out to by MTM Special Ops watches, he may choose one of the brands offered.
No intention to confuse and likelihood of confusion
The CAFC in its majority opinion held that because the page clearly labelled 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 was likely be confused as to the source of the products.
Dissenting opinion– non consensual use of the mark is infringement
The dissenting opinion records that actual confusion need not be proved and as per the statutory text non consensual use of the mark would amount to infringement.
The view of English Court
In February last year, the High Court , UK opined that use of ‘lush’ a trademark for cosmetics (as adword ) when the trademarked products are not sold by the online retailer amounted to infringement. Though the products were not sold by the online retailer, competing products were on display. The fact there was no overt message that the particular brand/trademarked product of Lush was not available and a shopper could not ascertain the same ‘without difficulty’ made the Court rule in favour of the trademark owner.