Advising Brand Owners to Protect Trademark Rights on Social Media
A look at the practical steps brand owners can take to safeguard their intellectual property in the ever-changing landscape of social media.
In today’s day and age, the advent of social media is on the rise creating its presence like never before and it is felt everywhere – as a growing field of business projection, contractual arrangements and revenue generation. However, for brand owners, social media has become a more valuable tool to communicate freely with your existing clients and to reach out to potential consumers. It has become a prime factor today for business owners – turning to Facebook, Twitter, YouTube, Instagram, LinkedIn or blogs to interact with their customer base, in turn providing new challenges for their owners and lawyers as they evolve with each passing day.
In order to ensure that brand owners protect their business assets and brand value, they should take a look at the following available resources for policing and enforcing trademark rights on social media today.
Hire an IP specialist/expert to perform a trademark pre-filing search and file an application
Before you take the plunge onto the social media scene, make sure you engage an experienced trademark lawyer to help navigate the many nuances of brand protection in the digital age and perform a comprehensive trademark search and provide you with a detailed opinion letter to determine the chances to use, adopt and register your trademark. This is one of those situations wherein cost-cutting can really cost you in the long run. So be prepared from the word go.
Register your trademark
Regardless of the fact that you plan on limiting your business to a particular jurisdiction or are interested in expanding it to another geographical location, it becomes quite important that you invest your time and money for protection of your trademark via registration. Going on this path, rest assured that you will have the sole rights to use a particular name, logo or otherwise within your industry in turn helping you to claim ownership of the same if a dispute arises.
So if you spot anyone using your trademarks without proper authorisation on Facebook, Twitter, Instagram or LinkedIn, you’re fully within your rights to put a hold on the said commercial activity that infringes upon your rights. The next step that you can take to protect a trademark is by sending the infringing party a cease and desist notice letter once you spot any offending or unscrupulous activity that dilutes the distinctive character of your trademark or is likely to create confusion for consumers.
Consider protecting your hashtags
Brand owners may explore the need to register a unique hashtag slogan. Hashtags are used these days creatively and help in identifying and facilitating searches for trending topics, key words in turn increasing the internet traffic towards its particular brand. It also serves as an unique identifier for the brands’ goods and services.
Securing a trademark for your username will help to prevent third parties from name squatting or impersonating you and, in all likelihood, deceiving your customers and damaging your brand reputation. If you have the intention of using your username in order to distinguish your product or service from those of others in the market, you may go ahead and apply for a trademark. However, to enable it to smoothly pass through the examination process, your username for your business must be distinct and unique enough.
Brand owners may explore the need to register a unique hashtag slogan.
Finally, do your utmost to ensure that you are not infringing others’ marks. In the context of social media, posting, re-posting, and sharing content (both first-party and third-party content) is particularly fraught with opportunities for trademark infringement. While most social media platforms allow users to freely repost content within their platforms, brand owners often are held to a higher standard than individuals. Thus, using third-party content for commercial purposes is always a high-risk endeavour, and you should be particularly be careful when doing so.
As a trademark holder, one should develop a pre-emptive, systematic and well co-ordinated social media protection and enforcement strategy keeping in mind the risks involved such as acquisition of handles, routine monitoring of user generated content on all social media platforms, protecting your rights and enforcing them in a responsible and pro-active manner and instilling a mechanism in place to tackle and avoid infringement activities.
Yashvardhan Rana is an Intellectual Property Lawyer with a particular focus on IP prosecution – from registrability analysis and risk management to providing legal opinion on the availability of use, adoption and registrability of trademarks to be launched by Fortune 500 companies as well as top FMCGs in India. He is a part of the Trademarks, Copyright and Design Prosecution team at Inttl Advocare, Noida, India. He also advises on trade mark protection strategies, copyright issues and specific assignments relating to Design Law, certain aspects of strategic brand management and advisory, IP auditing and due diligence to portfolio management, transactional advice and agreement drafting, permitted user/registered user recordals and other procedural compliances.
He is based out of New Delhi and is a member of Bar Council of Delhi, Delhi High Court Bar Association, APAA, INTA and FICCI IP Forum. In January, 2020 he was appointed as an Editor, The Trade Mark Reporter, INTA and in November, 2019, he was the recipient of the Top 50 Emerging IP Professional in the world award – The IPR Gorilla, 2nd Edition held in Dubai. Recently, he has been inducted as an ‘esteemed member’ of the FICCI IP Forum for IP Professionals to address the existing and evolving IPR issues in India alongwith stalwarts from the legal industry. He has also authored several articles on Intellectual Property Law and Practice which are published in leading blogs, websites, journals and magazines. His educational qualification includes an LL.M. in Intellectual Property Law from the Queen Mary University of London (2015-16).