Trademark Protection Lawyers
Establishing an online presence is a necessity for gaining a competitive advantage for most brands. Brands that seek accessibility and visibility to their brands use the Internet as a primary channel for marketing, advertising and selling their products and services. Brands either use online marketplaces for the B2C; B2B and P2P business models to generate sales; build proprietary website platforms; or utilize both online marketplaces and proprietary platforms to leverage sales. Online marketplaces like eBay, Amazon and Taobao are the leading platforms for consumer retail sales
Brands need to position themselves as market leaders with strong online presence combined with seamless online experiences that meet end-user expectations. Along with active brand promotion comes the issue of intellectual property protection and enforcement so that brands can be used effectively online while maintaining their reputation. A brand protection strategy for online activities is therefore essential and trademark protection lawyers specialise in brand protection strategy online and offline.
This article sets out some of the know-how for brand owners when working on a strategy with their trademark protection lawyers to protect their brands online.
It summarises the challenges facing brand owners online (including infringement of IP rights and damage to reputation).
This article refers to both UK trademarks and EU trademarks (EUTMs) and references both UK and EU case law and legislation.
Although the UK is no longer part of the EUTM regime since 31 December 2020, see EU Regulation 2017/1001 pursuant to the Trade Marks (Amendment etc) (EU Exit) Regulations SI 2019/269 and the Designs and International Trade Marks (Amendment etc) (EU Exit) Regulations 2019, SI 2019/638 those who held EUTMs immediately before IP completion day automatically became holders of comparable national UK trade mark registrations which are governed by the Trademark Act 1994.
The comparable right created is known as a ‘comparable trademark (EU)’ (or, for international registrations which designate the EU, a ‘comparable trade mark (IR)’).
EU Trademark Infringement After Brexit
Reference to an EUTM or international registration designating the EU in any document made before 31 December 2021 shall include references to the comparable rights created on Brexit.
Challenges facing trademark reputation online
Brand owners face several different challenges concerning online activity.
Infringement of IP rights
Trademark protection lawyers deal with infringement of IP rights in general and specifically trademark infringement. Section 10(1)-(3) of the Trademark Act 1994 is the seminal source of UK trademark infringement law. Any breach of intellectual property rights in general is an infringement of intellectual property rights. Businesses that advertise, market and sell their products or services successfully online will inevitably encounter competitors or other parties who will use, copy or otherwise exploit their intellectual property rights to derive some benefit from it whether financial or simply for increased visibility.
There are several different varieties of trademark infringement. Using the same or similar trademark in the same or similar competitive service is a different type of trademark infringement than say selling counterfeit goods online bearing the brand owner’s logo or brand name or trading in parallel imports or grey market goods.
As mentioned earlier the Internet has brought new kinds of infringement including using trademarks to drive visibility to a blog or vlog post on a social media platform like YouTube or Patreon. Brand owners may also need to deal with cybersquatting and Metatags and keyword advertising.
Trademark Reputation
One of the key elements of a trademark is reputation. As well as identification a brand is the tangible manifestation of the intangible goodwill amongst the public that is captured within your brand particularly if you have been trading for several years. You build a strong brand reputation over the years by focusing on customer satisfaction; pre-and after-sales care and a holistic customer experience. Great brands recognise this and employ omnichannel methodology to ensure that all sales and marketing are seamless across all customer-facing channels so the brand message and experience are consistent.
A good reputation is earned when several people generally or more often a specific group of people or community have a positive view of something or someone.
In business, this positive view is usually achieved through personal experience of your products or service or other people’s anecdotal opinion of your products or service passed around by word of mouth or via various media. Businesses use advertising and marketing to amplify an already existing positive view of their reputation acquired through good ethical business practices and success in delivering pre-, during and after-sales services.
Advertising or marketing alone will not give a brand a good reputation if the customer experience is not positive over a relatively long time. It’s for this reason that brands fight so hard to protect their brand reputation. Notwithstanding, in this time of social media particularly a reputation that takes a lifetime to build and can be easily tarnished by competitors, opportunists, the prejudiced and the envious sometimes for financial profit or other some other advantage and sometimes simply because they can get away with their actions. Employees, partners; disgruntled former customers; and other hostile or antagonistic third parties with strong personal private opinions taking a dislike to a person or their business often take action to damage brand reputation.
In the case of trademarks with a reputation, infringement does not require that there is a likelihood of confusion and even allows the infringing use in the course of trade to be for dissimilar goods or services.
The interpretation of “in the course of trade” is flexible.
S10(3) and (3A) of the Trademark Act 1994 states that:
A person infringes a registered trade mark if he uses in the course of trade in relation to goods or services, a sign which—(a) is identical with or similar to the trade mark, (b) where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.
(3A) states that:
Subsection (3) applies irrespective of whether the goods and services in relation to which the sign is used are identical with, similar to or not similar to those for which the trademark is registered.
Under s10(3), for a mark that has a reputation there are three types of potential damage (1) detriment to the distinctive character of the mark “dilution” (2) detriment to the repute of the mark “tarnishment”; and (3) taking unfair advantage of the repute “free riding”.
A good example of a case that considered many of the elements of s10(3) is Lidl v Tesco EWHC 873. In that case Lidl successfully sued Tesco in the UK for trademark infringement and passing off, and copyright infringement under s1093) of the Trademark Act 1994.
The following points are worthy of note:
First, the Court concluded that it was in line with the system for the protection of marks as adopted on the basis of 89/104/EEC (Repealed by EU Directive 2008/95/EC), that the interests of a 3rd party in using, in the course of trade, a sign similar to a mark with a reputation must be considered in the context of art5(2) of the directive, in the light of the proximity for the user of that sign to claim “due cause”.
Second, that the third party that takes unfair advantage of trademark reputation can claim “due cause” for subjective interests. Reference was made to Interflora and Interflora British Unit [2011] ECR I‑8625.
Third, that the concept of “due cause” is meant to strike a balance between the interests in question. A strong senior user of a family of marks with a reputation is obliged to tolerate the use of the identical or similar sign if “due cause” can be established by a more junior but strong user
of similar or the same mark.
Fourth, it was common ground that Mr De Vries had used the sign “The Bulldog”, before the mark “Red Bull” was registered and had a reputation.
Fifth, the default position is that the more junior but strong user is using the mark in bad faith unless it can show “due cause”. Reference was made to C‑487/07 L’Oréal and Others [2009] ECR I‑5185.
Sixth, in order to constitute due cause 2 factors must be made out:
(i) How the junior mark has been accepted and what reputation it has with the relevant public?
(ii) What is the intention of the owner of the junior mark?
Seventh, in order to determine whether the junior mark has been used in good faith it is necessary to:
(i) Take account of the degree of proximity between the goods and services for which that sign has been used and the product for which that senior mark was registered;
(ii) Have regard for when that sign was first used for a product identical to that for which that senior mark was registered; and
(iii) When the senior mark acquired its reputation.
As trademark protection lawyers we often have to deal with:
Virtual mobbing: in which groups of people set up blogs or vlogs to unfairly tarnish products or services
Trolling: virtual social media campaigns targeting the brand making derogatory comments in which groups of people set up blogs or vlogs to unfairly tarnish products or services
UGC: User-generated content tarnishing the trademark
Influencer: reverse influencer publicity by which influencers who have nothing to do with the brand deliberately associate themselves with the brand
PR backlash: when lawsuits or other enforcement actions rebound negatively on the brand
Predictably reputation often forms a critical element of trademark infringement disputes including trademark dilution. In trademark enforcement, and passing off disputes the claimant is required to prove reputation. In all these scenarios working with a good trademark protection lawyer to devise a trademark strategy can minimise disruption to your brand.
In all the above scenarios a good trademark protection protection lawyer can work with your business to devise a strategy to minimise disruption and damage to trademark reputation.
Examples of Strategies for Managing Trademark Reputation Include:
– Intellectual Property Notices
The International Anti-Counterfeiting Coalition
-Trademark Infringement Policies – Instagram – Facebook – YouTube
To book a consultation to work with us to devise your trademark reputation strategy please contact us on (020) 7305-7491 or at [email protected] we would be delighted to assist you. The writer is an Internet and digital technologies + entertainment law specialist, owner and principal solicitor at PAIL® Solicitors.
Peter Adediran’s specialist niche areas of practice are digital media business SMEs and IP, both contentious and non-contentious.