Amazon.com did not infringe on a military watchmaker’s intellectual property by displaying similar watches as “related searches,” the Ninth Circuit Court of Appeals ruled on Oct. 21.
In 2011, Multi Time Machine, manufacturer of MTM Special Ops watches, filed suit against the e-tail giant in California federal court, alleging that its search results infringe on its trademark.
The complaint said that while Multi Time Machine does not sell its watches on Amazon, when customers enter the brand’s name into Amazon’s search bar, the site displays competing military-style watches under “related searches.” The watchmaker claimed this created the likelihood of consumer confusion.
The 2-1 opinion, signed by Judge Barry Silverman, decreed that a “prudent consumer” would not be confused by Amazon’s search results, as all the competing brands, such as Luminox, were labeled as such.
“Amazon is responding to a customer’s inquiry about a brand it does not carry by doing no more than stating clearly (and showing pictures of) what brands it does carry,” wrote Silverman. “Not only are the other brands clearly labeled and accompanied by photographs, there is no evidence of actual confusion by anyone.”
The court also declined MTM’s request that Amazon stipulate it does not carry its watches.
“The search results page is unambiguous—not unlike when someone walks into a diner, asks for a Coke, and is told ‘No Coke, Pepsi,’ ” Silverman wrote.
In a dissenting opinion, Judge Carlos Bea noted that searches for MTM watches on competing sites Overstock.com and Buy.com simply yield no results.
Bea complained the court opinion creates “new trademark law,” and a jury should decide whether the results confuse consumers.
For instance, Bea wrote, the consumer might falsely believe that Luminox has acquired MTM. Challenging the Coke and Pepsi analogy, Bea argued that “no shopper would think that Pepsi was simply a higher end version of Coke or that Pepsi had acquired Coke’s secret recipe and started selling it under the Pepsi mark.”
The decision is an unusual example of a court changing its mind. In February 2013, a California federal judge ruled in Amazon’s favor on the confusion issue on summary judgement. However in July, the Ninth Circuit Court of Appeals reversed that decision and said the issue should go to trial. Amazon appealed for a rehearing, which was granted. This new decision overturns the July ruling.