It is frustrating to find that brand misuse online can be difficult to challenge. In some instances, it can also have a damaging impact on your corporate reputation. So what should entrepreneurial businesses do to protect the use of their brand name online?
The best way to protect your brand name – both on and offline – is to obtain a trademark registration, making sure it covers all the markets where your goods or services are offered. There is little point in waiting until your brand name is being challenged before finding that you are unable to provide sufficient proof of ownership and the ‘goodwill’ acquired as a result of trading under the name for several years is simply not enough. Having a valid trademark registration in place is your first line of defence.
Being aware of any online brand misuse can be challenging in itself. For big brands like Nike and Coca Cola there is clearly a significant vested interest in monitoring all web content for potential misuse and in most instances, the threat of an infringement action would be sufficient to deter the other party. For small and medium-sized businesses, monitoring online brand mentions is no less important and reacting to potential misuse by making a complaint to the relevant body sends a clear message to the perpetrator that your brand is not to be messed with.
One of the most common types of brand misuse is linked to the use of keyword advertising – most commonly, Google Adwords. It is not illegal for businesses to use the brand name of another in keyword advertising to drive sales of their own products and services, as long as they are not misleading the consumer.
An infringement action brought by Interflora against M&S for using its brand name as a Google Adword in a bid to drive online traffic to its own online flower business, has made this practice a little more difficult. In its ruling last year, the Court of Justice of the European Union (CJEU) decided that the trade mark owner is entitled to prohibit third parties from using keywords that are identical to their registered trade mark, if such use takes advantage of, or dilutes the distinctive character and reputation of their mark, or if it could have a detrimental effect on the brand owner’s customer loyalty.
Importantly, however, the court also stated that a competitor may be able to avoid an infringement action if they can show that their advertisement simply draws the consumer’s attention to their competing product. For the moment at least, the door appears to have been left partly open for any business wanting to market itself in this way.
Another common area of trademark infringement is online auction sites, such as eBay, where users can sell goods which in some cases have been found to be counterfeit. In a case brought by L’Oreal against eBay, the CJEU has ruled that if eBay is considered to have assisted in any misuse by the site’s users, it should be held responsible for infringement. As a result, brand owners may now bring an action against eBay in these circumstances.
It is also important for brand owners to stay alert to any use of their name in website domain names. In the UK, an organisation called Nominet exists to manage all .uk web addresses and if a business believes that their name is being used by a rival with the intention to mislead internet users or direct them to a rival site, it is possible to make a complaint and have the site blocked. In some instances, more devious competitors have been known to use common misspellings of a well-known trade mark in their domain name in a bid to direct internet users to their website and in such cases, it is usually necessary to bring an infringement action to prevent them from doing so.
In the age of the internet native, web sites can be created and uploaded in a matter of minutes, so keeping track of any brand name misuse in this dynamic environment can be challenging. But keeping watch of how your name is being used online is an essential part of protecting your brand reputation and the goodwill it leverages in your target markets.
Fiona McBride is a partner and trademark attorney at Withers & Rogers – one of the UK’s leading intellectual property firms. www.withersrogers.com