Trademark use, and thus trademark infringement, have increasingly shifted from the offline to the online world. How should you deal with trademark infringement on the Internet and, more specifically, how can you guard against trademark infringement in social media?
Community trademark law applies to both the online and the offline world. A trademark owner may take action against a later trademark that is identical or confusingly similar to its earlier trademark and is used for identical or similar goods or services, or when the use of the later trademark takes unfair advantage of or is detrimental to the distinctive character or reputation of the earlier trademark.
Social media accounts
Twitter, Facebook and LinkedIn are perhaps the best-known social media sites, but there are also newcomers such as Pinterest, which allows users to design a virtual noticeboard with images of different areas of interest. A social media website can appear and grow quickly. For instance, Pinterest was created in March 2010 in a beta version and could be visited only on invitation. Since August 2012 users can sign up uninvited and for free. At present, Pinterest has more than 10 million users and that number is still growing. Social media accounts are created so quickly that trademark owners may not be able to open an account for their own trademarks because a third party has beaten them to it.
‘Suck sites’ and cybersquatting
When it comes to social media accounts, prevention is better than cure. When a new social media site appears, it is important to act quickly to create an account for the trademark in order to avoid cybersquatting. Taking action against an account for a trademark owned by a third party which is not the mark owner can be time-consuming and expensive. In addition to cybersquatted social media accounts, trademark owners may also have to deal with so-called 'suck' sites. On such sites trademarks are discredited by announcing that the product or service involved is bad. In the event of a cybersquatted social media account or a suck site, each site has different procedures for claiming or removing an account, or discontinuing negative publicity.
Taking measures against trademark use in social media
While putting an end to trademark infringement in the offline world requires a warning, opposition proceedings or a court decision, in many cases trademark infringement in social media is much easier to stop as many social media sites have specific complaints procedures, usually in the form of a complaints form. On the form a complainant must state which trademark rights it opposes and which steps should be taken for the accounts in question. For instance, it could ask to "transfer the [infringing] accounts" or "remove the [infringing] accounts". In general, the threshold for granting a request concerning social media is fairly low. According to the law and precedent, resellers may generally use a trademark in order to advertise the product involved. In social media a mark owner can successfully object to use of a trademark by resellers if an unauthorised reseller is involved. In contrast, in the offline world descriptive word elements in a registered device mark cannot easily be invoked against an existing device mark that consists of the same descriptive word elements.
According to Community trademark law, descriptive word elements do not qualify for trademark protection. In the event of a complaints procedure against a social media website, the descriptive character of a trademark is usually looked at less strictly; complaints based on a device mark that uses descriptive word elements can usually be brought successfully.
Taking action against social media accounts by means of a complaints procedure holds certain possibilities for trademark holders. Nevertheless, they must consider the implications of such an action. Taking measures against social media sites might attract bad publicity and perhaps cause even greater damage. Each situation should be considered carefully.
This article first appeared in IAM magazine. For further information please visit www.iam-magazine.com.