Tobacco company stops unauthorised use of trademark on Facebook

Venezuela

The popularisation of the internet and, in particular, the use of social networks, have created new ways of infringing IP rights, as well as consumer rights and advertising regulations - for example, through the use of popular trademarks as usernames on social network profiles.

Tobacco company CA Cigarrera Bigott Sucs, a subsidiary of British American Tobacco, owns the well-known trademark BELMONT in Venezuela. In January 2012 it discovered that its trademark was being used as an identifier for a profile on the social network Facebook. Bigott considered that, due to the use of its trademark on the social network, internet users would mistakenly believe that the profile at issue was authorised by Bigott as a means of communicating with consumers. This was demonstrated by the fact that internet users had posted messages requesting meetings with the company or information about the brand.

Besides the negative impact on the brand, the unauthorised use of the BELMONT mark on the social network could have exposed Bigott to the possibility of being subjected to investigations by regulatory and health agencies - the latter were likely to believe that the profile was operated by the company without complying with the appropriate regulations on cigarette advertising to minors, among others.

Bigott filed a complaint under the Facebook Intellectual Property Policy, alleging infringement of its IP rights and effectively claiming ownership of the BELMONT trademark in Venezuela.

The complaint was processed quickly. Within 72 hours, Facebook had checked the information provided and removed the profile at issue, thereby recognising Bigott's exclusive rights in its trademark.

Companies that are engaged in fields where advertising is regulated by specific legislations, such as tobacco and alcohol, should be particularly vigilant towards the use of their trademarks as usernames on social network profiles. They are advised to make use of the policies for the protection of IP rights, such as the Facebook Intellectual Property Policy, to avoid being sanctioned by regulatory bodies for failure to comply with the relevant regulations.

Ricardo Enrique Antequera H and Andrés Brandt Von der Osten, Estudio Antequera Parilli & Rodríguez, Caracas

The authors' firm acted for CA Cigarrera Bigott Sucs in this case

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