How brands can protect their trade marks in the age of social media

Social media is awash with trade marks. Brands, intentionally or not, are involved in millions of social media posts on a daily basis, with their trade mark possibly being infringed upon in the process. How are trade marks infringed upon on social media, and how can they be protected?

Why is social media a challenging place for brand owners?

Social media is constantly evolving, which presents difficulties in clearing trade marks for use. It can prove challenging for brand owners who want to stay ahead of the curve with new platforms and technologies, which are developing at a great speed.

It is no longer realistic to merely carry out a trade mark search and apply for trade mark registration to protect a brand. Brand owners need to proactively build and maintain their own social media presence on sites.

As it is easy and free to set up a social media account, infringers and fake news purveyors can quickly cause damage to a brand owner. Usernames on social media sites are registered on a first-come, first-served basis.

They are also not verified when registered, resulting in username squatting, which is when someone other than the brand owner registers a username incorporating the brand. The motivation is to either mislead consumers, tarnish the brand or coerce the brand owner into buying the username at an inflated price.

Brand owners are also at risk of bad ratings from consumers and a comparison of price and services with their competitors. Brand owners can’t do anything about factual information, even if it impacts the brand negatively.

However, negative reviews should be viewed as an opportunity for positive interaction with the consumer. The real problem only arises when brands do not respond appropriately.

Brand owners are also vulnerable to employees who share confidential information or trade secrets to their contacts through social media.

It is therefore critical to have a strategy for protecting brands on social media, including both prevention and response to unauthorised use and exploitation.

How is a trade mark infringed on social media, and what are the penalties?

A trade mark is usually a word, slogan, logo or any combination that represents the products or services of one business and distinguishes it from another. It provides protection from competitors who try to use a confusingly similar name for their business.

A registered trade mark is infringed if there has been unauthorised use in the course of trade of the same or similar mark, in relation to the same or similar products or services, that is likely to cause confusion.

The use of the infringing mark would likely take unfair advantage of, or be detrimental to, the distinctive character or repute of the registered trade mark – even if there is no confusion or deception.

A good general rule of thumb is, if you did not take the picture or write the text, it is not yours. Users should not risk copyright violation. Images taken from sites should be replaced with stock content, or content they have created on their own.

How can a brand proactively protect their rights on social media?

The first step to mitigating risk is to audit trade mark rights. All trade marks should be cleared by carrying out searches and should be registered in the core countries of all products and services of interest. Social media sites are more likely to remove offending material or suspend accounts if a complaint is based on a registered right.

Here are a few ways brands can protect their rights on social media:

  • Brand owners can premeditatedly obtain defensive registration of brands on social media platforms. This is usually done at no cost and is not available for registration, meaning there is no opportunity for potential misuse by others. This prevents a loss of time and expense in trying to reclaim a name once someone else has registered it;
  • Developing a clear social media policy that is easily accessible is a must for businesses with a social media presence. Robust guidelines should be put in place to ensure the brand is used and discussed by employees and third parties consistently, across all social media platforms;
  • Social media sites are under no obligation to police and detect infringing activity. A few employees or an independent monitoring service can regularly check sites for damaging content. Searches through Google/alerts can generate regular results. TweetBeep.com, for example, provides alerts when people are tweeting about a business; and
  • Depending on the nature and the degree of infringement, a brand owner may wish to contact the infringer directly. An email requesting the unauthorised use to stop may be enough. All major social media sites have takedown tools available through an online form.
  • Brand owners can submit a complaint with the social media platform and request that the infringing or offending post or user be taken down. If a direct amicable or takedown request does not achieve the desired results, traditional enforcement methods such as sending a cease and desist letter should be pursued.

This article was first published in Media Update.

Date published: 9 April 2018
Author: Shamin Raghunandan

Tags: trade mark social media