There’s an interesting trade mark case brewing in Australia, one that has some useful trade mark lessons.
Online retail giant Amazon is opposing a trade mark application filed in 2015 by an Australian clothing retailer, Live Clothing, to register the trade mark Glamazon for retail services, including those relating to clothing. On the face of it, this case looks like an absolute “slam-dunk” for Amazon. This case is, however, far from clear.
Live Clothing was established in Perth in 1994 and has, in fact, been using the trade mark Glamazon ever since. It has grown impressively, to the extent that it now has 12 clothing outlets in Western Australia, an online offering and a staff complement of 100 employees. Live clothing already has registrations in Australia for the trade marks Glamazon and Glamazon Label in class 25 for clothing. These registrations date from 1999.
Strangely enough, Amazon, was also founded in 1994, but the company’s growth has been more dramatic. In the 2017 Brand Finance Global 500 survey, Amazon was ranked the third most valuable brand in the world, with a value of USD106-billion, with Google in first place and Apple in second place.
Amazon’s action against Live Clothing seems to be linked to the fact that it is planning to bring the Amazon brand to Australia and is apparently in the process of recruiting local staff. Amazon claims to own trade mark rights to the name Glamazon Fashionweek. Amazon is also known to use the term Glamazon internally, as the name of a social group for certain employees.
This case is particularly interesting for a number of reasons. For starters, the Amazon brand is a trade mark lawyer’s dream, as it is the kind of trade mark we wish our clients would bring to us for protection and enforcement. It doesn’t describe the product at all, nor does it extol the product’s virtues; it simply doesn’t fall foul of those characteristics that render trade marks weak and difficult to protect or enforce.
In short, the Amazon brand is not one required for use by other traders. Yes, it is a geographic name, but it’s a geographic name that is used fancifully, like Sahara for computers and Patagonia for clothing. It is interesting that the brands Apple and Google are also trade marks that are inherently very strong. Apple is an ordinary word that is used fancifully, whereas Google is the phonetic equivalent of a rather obscure word (meaning an extremely large number, making it, essentially, meaningless).
If it wasn’t for the prior use by Live Clothing, this would be a case that, in my view, could only go one way. I believe that many would agree that an online retailer called Glamazon would cause consumer confusion and that it signified a particular Amazon offering. Although intention doesn’t always play a role in infringement, I believe that there would be widespread agreement that anyone starting an online retail business called Glamazon was intending to cause consumer confusion.
I also believe that there would be agreement that Glamazon would dilute the well-known trade mark Amazon, in the sense that it would cause blurring, or a whittling away of its distinctive commercial magnetism. I also suspect that the Amazon brand is well-known in Australia, which may be indicative of the fact that the old notion regarding the territorial nature of trade mark rights (still expressed in a recent South African court decision) is becoming increasingly odd in today’s world.
I look forward to seeing how this case plays out. If I were a betting person, I’d put money on an out-of-court settlement.