In a press statement released last week, Anti Copying In Design (ACID) gave details of a dispute between independent designer Rachael Taylor and high-street retailer Marks & Spencer, which Taylor alleges had copied her hand-drawn flower motif for some of its own fashion lines. Though the motif appears to have lacked trademark or registered design protection, Taylor’s lawyers sent cease-and-desist letters claiming copyright infringement. After this approach failed to produce results, Taylor took to social media to air her frustration – to immediate effect. Marks & Spencer reportedly apologised to the designer and removed the allegedly infringing products from its stores. As SMEs struggle to meet the costs of obtaining and asserting their IP rights, could social media prove to be a more cost-effective – and perhaps more powerful – tool for enforcement?

Social media’s importance in the relationship between brand and consumer is an issue that readers of this blog will be well aware of – and it appears that many smaller enterprises that may find it difficult to stump up the costs of legal enforcement have realised that social media can be leveraged to their advantage.

Although such approaches have sometimes proven effective, Julia Dickenson, an associate at Baker & McKenzie, cautions that use of social media in this way comes with its own risks. “Social media is, by its very nature, in the public domain and its use should be carefully considered to avoid making any potentially libellous statements or groundless threats of infringement,” she says. “False allegations could quickly lead to the SME themselves becoming the target of unwelcome adverse publicity and possibly even legal action.”

In addition to asserting their rights, there have also been several instances of SMEs utilising social media to respond to claims of infringement made against them by larger corporations. By portraying themselves as victims of so-called ‘trademark bullying’, smaller businesses have been able to garner public support, often resulting in a harmful impact on the brand of the claimant.

However, Dickenson points out that there are tactics that trademark owners can adopt in order to avoid the ‘bully’ label: “These could include 'amicable settlement' approaches that aim to explain the reason the company believes that there is an infringement and how the infringement can be remedied amicably, taking into account the circumstances of the alleged infringer and the infringement.” Dickenson suggests that, in such a scenario, in-house counsel could apply the 'headline test': “Ask the question, ‘How would we feel if our actions were the subject of a news headline?’ This could help counsel to consider whether the circumstances warrant adopting a lighter touch.”

While there may be a temptation for SMEs to forgo the costs of IP protection, Dickenson stresses that reliance on social media for enforcement cannot be considered a replacement for the business and legal advantages of trademarks and registered designs. “For a 2D graphic work – such as the motif in the case of Rachael Taylor – reliance on copyright or unregistered design rights, where they exist, may well be sufficient,” she says. “But for something more complex, like a product intended for the consumer market, then registered design and trademark protection should certainly be considered. It is also worth noting that, while copyright only protects against copying, trademarks and registered designs give their holder a monopoly right.”