Matthew Sammon and Vicky Butterworth
The increase in different media channels continues to present difficulties in clearing marks for use and steering a business on brand selection
Social media offers brand owners a dynamic and interactive platform through which to promote their brands. It takes many forms, from blogs 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 any brand protection strategy.
However, it 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 a business on brand selection. It is no longer feasible simply to select a brand, conduct a clearance search and apply for trademark registration – brand owners need to consider the application of the brand on all platforms, including all forms of social media. In addition, they need to monitor social media in order to police 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 for businesses to consider in depth how their primary and sub-brands and any associated campaigns will be represented in all forms, including in the social media space (and to obtain appropriate protection accordingly). Twitter, for example, continues to grow in popularity and is an important tool not only to advertise a brand, but also to create a buzz around the values of a company and its associated products. Consideration must be given not only to the primary brand, but also to any associated Twitter advertising and whether this 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. However, given that hashtag trademarks can reach a global audience instantly and are treated in the same way as any other mark in many jurisdictions, similar considerations need to be given to their use and protection.
Hashtag trademarks should be used consistently within the business and 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, which means that the hashtag may in turn become valuable intellectual property in its own right. The business needs to focus on this approach before launch, conduct relevant clearance searches and seek protection where appropriate. Strict guidelines on what should and should not be used on Twitter should also be put in place to ensure that any infringement risk is minimised and the goodwill in the brand is not eroded. The practice of ‘newsjacking’ (ie, capitalising on the popularity of a news story) can be an excellent and relatively cheap way to launch a social media campaign for a brand. However, brand owners should think carefully about when this would be appropriate.
Recent examples of hashtag trademark applications include Coca-Cola’s application in the United States for ‘#smilewithacoke’ and ‘#cokecanpics.’ While the marks are likely to be protectable given the inclusion of the ‘coke’ house brand, consideration needs to be given to searching for the additional elements of the mark to protect against confusion with other entities and their social media presence, as well as any unwanted associations which 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 a business’s general IP strategy. The key to a successful overall brand protection strategy is to consider all possible applications of the brand at a very early stage of development 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 that the brand is used consistently across all social media and in accordance with the core values for which it stands.
Unauthorised use of brand names on social media
If a brand name is being used by a third party on social media without consent (eg, 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 that a brand owner would prefer, 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. A brand owner should consider a number of issues before taking any action – these are not specific to social media, but they do require particular consideration in this context.
First, an assessment should be made as to whether the particular use of the brand name actually amounts to trademark infringement or passing off (or possibly even copyright infringement, 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 a Twitter handle or hashtag containing a brand name is being used by the brand owner. This could make establishing misrepresentation difficult for the purposes of a passing-off claim.
Second, 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 if it is 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 takedown policies of social media sites may be of great assistance in this situation.
Third, social media is transient and fast paced. A brand owner should 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 wrapper. An interim injunction may be an appropriate option, 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 the defendant operates online only and is thus difficult to pin down.
Fourth, given the nature of social media (eg, 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 act will depend on the nature and extent of the mark’s use and who is using it. A Facebook page set up by fans of the brand can significantly increase brand recognition and generate further goodwill, 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 that some form of legal action is required. Action may also be appropriate because of the potential deterrent value and to put a clear marker down that the brand owner does not consent to particular uses of its brand name on social media.
In summary, brand owners need to embrace social media as part of any brand protection strategy. They should also regularly monitor it for possible infringing activity (company employees are often best placed to do this) and be ready to take rapid action where an infringement poses a real issue for the brand.
Matthew Sammon is a trademark attorney with over 15 years’ experience advising clients on brand protection and is the head of Marks & Clerk’s UK trademark (prosecution) practice. He specialises in the management of global trademark portfolios and regularly advises clients in relation to clearance searching, filing strategies and enforcement of trademark rights.
Vicky Butterworth is an IP lawyer specialising in the management and enforcement of trademarks. She has considerable expertise in conducting trademark litigation in the United Kingdom. Ms Butterworth regularly advises clients in relation to social media and internet issues, such as those involving domain names and keywords, and has conducted proceedings before the Internet Corporation for Assigned Names and Numbers and Nominet.