Protecting your trade mark in the age of social media March 2018

By SHAMIN RAGHUNANDAN, Published in Intellectual Property

The rise of social media over the past two decades has drastically transformed and influenced public engagement, political disclosure and consumer buying decisions across industries. Social media is no longer just about conversations, it is about commerce. Most consumers first vet every purchase through the Internet, from electronics to sports gear.

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Wikipedia defines social media as "computer-mediated technologies that facilitate the creation and sharing of information, ideas, career interests and other forms of expression via virtual communities and networks." Its many forms include blogs, microblogging, rating/review sites, online forums, photo/video sharing platforms, chat apps and of course, social and business networks. Recent stats ( www.omnicoreagency.com) reveal that Facebook has 2.072 billion monthly active users; YouTube 1.3 billion; Instagram 800 million; LinkedIn 500 million and Twitter 330 million. Social media is a key enabler to brand marketing strategies, creating opportunities for brands to engage directly with a global consumer base, at a low cost.

A business can communicate information about products and services and special offers. It can drive consumers to other marketing channels, generate hype around a new campaign and proactively deal with a public relations crisis, rather than using the traditional means of a press release or a scripted commercial. However, social media is also rife with challenges for brand owners on how others may use their marks. The major risks include:

  • content posted by users or competitors that infringes a brand owner's trade mark.
  • usernames are not verified when they are created and registered on a first-come, first-served basis. Username squatting, when someone other than the brand owner registers a username incorporating a brand, is a scourge of social media. The motivation is either to mislead consumers or coerce the brand owner into buying the username at an inflated price.
  • the creation of social media pages by an imposter with the intention to tarnish the brand and mislead the consumer.
  • fake news or accounts of bad experiences with the brand.
  • employees who share confidential information or trade secrets (business strategies, manufacturing processes etc.) to their contacts through social media.

The first step to mitigate risk is to audit trade mark rights. All trade marks should be cleared by carrying out searches and then registered in core countries for all products and services of interest. A trade mark is usually a word, a slogan, logo or a sign (or any combination) which identifies the products or services of one business and distinguishes it from another. It provides protection from competitors who try to use a confusingly similar name for their products and services. However, it is no longer realistic to merely carry out a trade mark search and apply for trade mark registration. It is critical to have a strategy for protecting brands on social media, including both prevention and response.

One way for businesses to limit the impact of unauthorised use of their brands, and for consumers to find the right source on social media, is to build and maintain their own social media presence on sites which make the most sense for their brand. For example, a business may wish to use Instagram to tell its brand story using engaging visual content. Or Twitter's new maximum 280 character long tweets, which allows information to be spread quickly. Either way, the business creates its own positive hype and builds brand loyalty.

It can be difficult to keep ahead of the curve as the surge of different media platforms is a continuous challenge for brand owners. It is not necessary to engage with consumers on every social media platform and it should be recognised that not every platform is suitable for a brand. The key is to obtain defensive registration of brands on social media platforms (usually at no cost) eliminating their availability for registration and potential misuse by others. This prevents time loss, and the expense of trying to reclaim a name once someone else has registered it. CNN, for example, had to purchase a Twitter account from an unrelated party which incorporated its name.

Developing a clear social media policy that is easily accessible is essential for businesses with a social media presence. Robust guidelines, in accordance with the fundamental values the brand stands for, should be put in place to ensure the brand is used and discussed, by employees and third parties, consistently across all social media. A social media policy for employees outlines how a company and its employees should conduct themselves online. It safeguards a brand's reputation while also encouraging employees to responsibly share the company's message.

Social media sites are under no obligation to police and detect infringing activity. Monitoring by the company or through an independent monitoring service means sites can be checked regularly for damaging content. Searches through Google.com/alerts can generate regular results, and TweetBeep.com provides alerts when people are tweeting about a business.

If infringement or misuse is detected, it is important to deal with it using a public relations mind-set and ensuring legal advice is sought. Unauthorised use of a trade mark may result in damage to a brand owner's rights. Enforcement efforts should be prioritised based on the business, the brand and the specific risk involved. All major social media sites have takedown tools available through online forms. Brand owners can submit a complaint with the social media platform and request that the infringing/offending post or user be taken down. Social media sites are more likely to remove offending material or suspend accounts if a complaint is based on a registered right. If this does not work there are traditional enforcement measures such as cease and desist letters and court proceedings. Brand owners should be mindful of defences such as parody. Twitter, for example, allows parody impersonation, newsfeed, commentary, and fan accounts if it is clearly stated that the profile is "parody", "fake", "fan", or "commentary". In addition there may be cases where freedom of speech outweighs brand reputation. Depending on the circumstances, the use of a brand name in a hashtag where no products or services are advertised or referred to in the tweet may not be considered use of the mark in the course of trade. An identical trade mark may be used by someone else, but on unrelated products or services. This use may not be infringement because it does not cause confusion. There are also limits to trade mark rights, such as geographic limitations.

However, not all infringements are intended to harm as is exemplified by the Coca-Cola Facebook page which in 2017, according to Statista's statistic portal, had over 107 million followers. It was first created by a fan and the company dealt with the use of its brand by cooperating with the fan to run the site which is now the official site of the Coca–Cola Company.

Raghunandan is a Partner with Spoor & Fisher.

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