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eBay Wins Another Trade mark Battle Against Perfumebay.com
On November 5, 2007 the U.S. Court of Appeals Ninth Circuit released its decision in Perfumebay.com Inc. v. Ebay Inc., affirming the lower court’s decision that Perfumebay infringed eBay’s trademark and prohibiting Perfumebay from using a website ending with “ebay.” Perfumebay had challenged the lower court’s finding that the conjoined terms “perfumebay” and “PerfumeBay” created a likelihood of consumer confusion with respect to the mark “eBay.”
In reaching its decision, the Court of Appeal applied an eight factor test used to determine whether a likelihood of confusion exists, placing the greatest emphasis on the “three most important factors” “in the Internet context: 1) the similarity of the marks; 2) the relatedness of the goods and services; and 3) the parties’ simultaneous use of the Web as a marketing channel. In applying these factors the court found that the similarity was demonstrated by various search engine results, that Perfumebay and eBay sell similar products on the Internet (perfume), and that both use the Internet “as a marketing and advertising facility, a factor that courts have consistently recognized as exacerbating the likelihood of confusion.” Since these three primary factors for “Internet trademarks” weighed against Perfumebay, the court noted that the remaining five factors of the eight part test (actual confusion, marketing channels used, degree of customer care, Perfumebay’s intention in selecting the marks, and likelihood of expansion into other markets) “must weigh strongly against a likelihood of confusion to avoid the finding of infringement.” The court found that these factors did not avail Perfumebay against a finding of infringement.
eBay was also successful in its cross-appeal that challenged the lower court’s finding that there was not a likelihood of dilution. As the court noted “[d]ilution is a cause of action invented and reserved for a select class of marks – those marks with such powerful consumer association that even non-competing uses can impinge their value.” In arriving to this aspect of its decision, the court noted that “eBay possesses a famous and widely known mark, ... has expended considerable resource in attaining this status,” and that “[eBay’s] mark is so highly distinctive that consumers are likely to view [Perfumebay’s] mark that is a bit different as essentially the same as [eBay’s].”
For a copy of the decision, visit: