This article first appeared in World Trademark Review and can be read at www.worldtrademarkreview.com.

Social media offers brand owners a dynamic and interactive platform on which to promote their brand(s). It takes many forms, from blogs and forums to photo sharing and social networks (well-known examples being Facebook, Twitter, LinkedIn and YouTube) and is increasingly a part of everyday life for many people.  Social media in its many forms should therefore form a key part of a brand protection strategy. 

However, social media is not without its challenges for brand owners.  The increase in different media channels continues to present difficulties in clearing marks for use and steering the business on brand selection.  It is no longer feasible to simply select a brand, conduct a clearance search and apply for trade mark registration – brand owners need to consider the application of the brand on all platforms including all forms of social media.  Brand owners need to monitor social media in order to police the use of the brand by third parties and keep one step ahead of potential infringers.  

Developing a brand protection strategy

There is an increasing need to have the business focus on its primary brand(s) and any associated sub-brands and to consider in depth how such brands and any associated campaigns will be represented in all forms including in the social media space (and to obtain appropriate protection accordingly). The use of Twitter, for example, continues to increase and is an important tool for not only advertising a brand, but creating a ‘buzz’ around the values of a company and its associated products. Consideration must be given not only to the primary brand but any associated Twitter advertising and whether or not such advertising may infringe the rights of third parties and equally may be protectable in its own right.It is easy to generate a hashtag strapline without thinking through the consequences - a global audience can be reached instantly and such straplines can be quickly re-used.  Hashtag trade marks are treated in the same way as any other mark in many jurisdictions and therefore similar considerations need to be given to their use and protection.  However, the approach that individual jurisdictions take to strap lines and their ability to act as an indication of origin needs to be borne in mind.

The use of hashtag trade marks must be used consistently within the business and should go through the same clearance protocols as any other mark. It is not uncommon for the hashtag strapline accompanying a brand to differ significantly from the main brand and the hashtag mark may in turn become valuable intellectual property in its own right. The business needs to focus on this approach before launch, have relevant clearance searches conducted and seek protection if appropriate. Strict guidelines on what should and should not be used on Twitter should also be put in place to ensure any infringement risk is minimised and the goodwill in the brand is not eroded.  The practice of “newsjacking” (capitalising on the popularity of a news story) can be an excellent and relatively cheap way of launching a social media campaign for a brand.  However, brand owners will need to think carefully about when this would be appropriate.

Recent examples of hashtag trade mark applications include Coca-Cola’s application in the US for ‘#smilewithacoke’ and ‘#cokecanpics.’ Whilst the marks are likely to be protectable given the inclusion of the ‘coke’ house brand, consideration needs to be given to searching the additional elements of the mark to protect against confusion with other entities and their social media presence, as well as any unwanted associations that may be potentially detrimental to the brand.

In addition, many hashtags invite use by third parties to direct traffic to their products and websites. Brand owners need to consider to what extent they are willing to allow third parties to use such marks when they contain the primary brand (this could also raise possible copyright issues). Securing registration is clearly the best way to ensure the greatest level of control, but such practical considerations need to be given due consideration and an appropriate enforcement strategy devised.

A social media strategy is increasingly intertwined with the general IP strategy of a business.  The key to a successful overall brand protection strategy is to consider at a very early stage of brand development all possible applications of the brand and who the brand will target.  This will enable an appropriate clearance and protection plan to be mapped out.  In addition, robust guidelines should be put in place to ensure the brand is used consistently across all social media and in accordance with the core values it stands for.

Unauthorised use of brand names on social media

If a brand name is being used by a third party on social media without consent (for example, in a Twitter handle or a hashtag or on a Facebook page) the question for the brand owner is what, if anything, to do about it.  The use may not be in the form a brand owner would like, but consideration should be given as to whether it actually presents a real issue for the brand.  It may, in fact, help to promote it and keep it at the forefront of the minds of those using social media. There are a number of important issues for a brand owner to carefully consider before taking any action, these are not specific to social media but they do require particular consideration in this context.

Firstly, an assessment will need to be made as to whether the particular use of the brand name actually amounts to trade mark infringement and/or passing off (or possibly even copyright if a logo is being used).  For example, use of a brand name in a hashtag where no goods or services are advertised or otherwise referred to in the tweet may not be considered use of the mark in the course of trade depending on the circumstances.  In addition, regular users of social media are likely to read many tweets, blogs, articles and so on over the course of a day or a week and so may well be pretty savvy when it comes to identifying whether use of, say, a Twitter handle or a hashtag containing a brand name is being used by the brand owner or not.  This could make establishing misrepresentation difficult for the purposes of a passing off claim.

Secondly, it may not be possible to identify who is behind the infringing material as social media accounts can be set up anonymously.  Even if the identity of the defendant can be established, it may not be worth pursing them if they are a very small business with limited funds or an individual who may be hard to keep tabs on (given the nature of social media, it is quite likely that an individual is behind the unauthorised use).  The take down policies of social media sites may be of great assistance in this situation.

Thirdly, social media is transient and fast paced.  A brand owner will need to consider whether legal action (with its associated cost and diversion of management time) is proportionate and necessary given that the infringing use may be a ‘flash in the pan’ and have stopped long before the matter reaches trial.  As the saying goes, today’s news is tomorrow’s fish and chip paper. An interim injunction may be an appropriate option therefore, but it can be a very expensive route and the brand owner will need to act fast in order to obtain one.  Even if an interim injunction is obtained, there could be issues around enforcing it, particularly if it is difficult to pin down the defendant if they only operate online.

Fourthly, given the nature of social media (e.g. the speed with which comments can be re-tweeted), a brand owner should consider whether taking action may result in negative publicity which could far outweigh the damaging effect of the unauthorised use of the brand name.

As with all infringements, on social media or otherwise, whether a brand owner chooses to take action will depend on the nature and extent of the use of the mark and by whom.  A Facebook page set up by fans of the brand can significantly increase brand recognition and generate further goodwill and so a brand owner may actively encourage it.  However, use of a brand name in a Twitter handle by a competitor or in association with counterfeit products (which could raise health and safety concerns) or in connection with extreme views with which the brand owner does not agree, could pose a significant problem for the brand which means some form of legal action is required.  Action may also be appropriate because of the possible deterrent value and also to make it clear that the brand owner does not consent to particular uses of the brand name on social media.

The key thing for a brand owner is to embrace social media as part of a brand protection strategy and at the same time keep monitoring it (employees of a company are often the best people to do this).  When it comes to deciding whether to take legal action for a particular infringement, a brand owner may end up making a conscious decision that the best course of action is to do nothing at all.