In a familiar scene, two players enter the arena: one armed with a ball, the other seemingly defenceless. However, unlike in a normal game of dodgeball, more players quickly enter the ring, each with a ball and the same aim: to take out the seemingly defenceless player.
The above scenario has a distinct parallel with the unauthorised use of trademarks or brand names on social media. The player with the ball is the common infringer that makes unauthorised use of another party's proprietary trademarks, while the ball represents the potential harm that can be caused to the rights holder. The problem with social media is its ability to seamlessly spread content at an astonishing rate. Thus, a rights holder can quickly be faced with hundreds of infringers, all of which have the potential to cause irreparable harm to its trademark or brand name.
While dealing with multiple infringers on social media may make rights holders feel hopeless or angry, a player that simply lies down or attacks without strategising will rarely win a game of dodgeball. Rather, the winner is usually the player that is smart and uses the tools available to its advantage.
The best tool for enforcing a trademark right on social media is a registration certificate or at least proof of a pending application. While the dedicated IP departments of the various social media platforms are willing to consider alternative rights, such as common law rights, these do not carry the same weight as proof of a registration.
However, a registration certificate is not always enough and may even be unhelpful. Social media depends on users, who have the power to promote or destroy a brand. Consumers who are passionate about brands are often inclined to use them on social media – for example, by posting logos on their social media pages. Although this technically can be seen as an infringement, this type of consumer use can often be a helpful advertising tool. In these circumstances, it is best to think before being overly aggressive towards such users and lodging a multitude of complaints. A better strategy is to actively engage the users and request, amicably, that they stop or limit their use of the trademark.
However, registration is a good defensive tool if the unauthorised trademark use is by a competitor or a party that is harming the brand.
On discovering the unauthorised use of their brands on social media, rights holders should consider the potential harm that could be caused to the brand by the user versus that which could be caused by alienating consumers. If rights holders choose their battles wisely and use the defensive strategies available to them, they will be brand dodgeball champions in no time.
For further information please contact Robin Richardson at KISCH IP by telephone (+27 11 324 3000) or email ([email protected]). The KISCH IP website can be accessed at www.kisch-ip.com.