In a highly competitive market this presents a new dilemma for brand owners. If they are spending time and money developing unique marketing, advertising and get up for the social media arena, should they be seeking to protect their investment? If they want to seek protection through trade mark registration, does this impact on how they devise their marketing strategies at the outset? And if they do seek protection, does this impose on them any restrictions on how they and others use these assets?
The fact that we are considering a new medium often presents the question of whether or not we are playing by any different rules when it comes to considerations of protection and enforcement of trade mark rights. The fact is that social media is simply another, although relatively new, medium through which companies can advertise their product offering, and still sits alongside traditional advertising media such as radio and TV advertising, paper advertising and word of mouth. The issues and rules that have to be considered are no different when looking at what can and should be protected through trade mark registration, meaning that businesses should still be viewing their social media campaigns alongside other advertising and brand get up, treating them as part and parcel of existing brand protection strategies.
If we start with what can be protected, we still have to consider basic principles for registration criteria, and apply these to each element being considered for protection:
- Is the branding/get up distinctive? Would consumers realise that the elements you wish to protect are in fact part of the branding designed to make your product stand out and be distinguished from those of your competitors, or will they consider it as just general information or background to the product description?
- Is the branding descriptive or laudatory in some way? This is where many advertising straplines fall down, as they are often seen as mere advertising puff, something which any business in that sector should be free to say about their product or a feature of their product.
- Is the branding a generic industry term? Again, this is something which is likely to already be in common use amongst other businesses in the sector, so it is not going to make your products stand out from those of other businesses, and will be using something which is already accepted terminology in your sector.
Since a trade mark registration is an exclusive monopoly right, you cannot have a position where one proprietor can potentially have exclusive rights over something that other traders in that sector should legitimately be able to use to explain or describe their product. The fact that we are looking at social media, where the savvy brand owner may get in first with a particular theme to a social media campaign, or a particular Twitter hashtag, for example, does not mean that the new medium and being first in that medium gives priority to them to obtain exclusivity. The same rules for registration continue to apply.
For this reason, the forward thinking brand owner, when considering their social media campaign, may wish to look at the elements they are planning to use and decide if these are new elements to their branding, or existing established branding in which they already own registered rights, or if this is a new and unique way of putting their product and brand across which can meet the criteria of being distinctive and not describing their product or using generic terms, leaving open the option to seek protection for their campaign.
Intellectual Property Offices are likely to continue applying the standard registration criteria when considering whether or not to grant protection, for example to Twitter hashtags. The US Patent and Trademark Office has, for instance, already issued guidance to its examiners reminding them that the existence of a hashtag in an application should not in any way change the approach they take to deciding if a trade mark meets the relevant criteria for regsistration.
Another critical element at the development stage of any advertising campaign, and social media is no different here, continues to be the question of, not only can you protect this brand, but also the question of whether anyone else has beaten you to it. Just because the plan is to use a particular advertising theme, strapline or get up in a social media campaign, this is still potentially going to be an infringement if someone already owns registered trade mark rights for something which is the same or confusingly similar. For this reason it continues to be recommended that brand owners take a cautious approach and run risk assessments of the trade mark position on the Register of the country of interest to their marketing campaign.
There is then the issue for the brand owner of whether or not they should seek trade mark registration for the name and get up elements of their social media campaign. Clearly for those undertaking a one off or very short lived campaign, there may be little merit in going through the registration process, as the interest and investment is transient, and by the time the application process is underway the campaign may be over and done with. In these circumstances it is however still important to consider the risk assessment angle. Even a one off use could be an infringement and spell embarrassement and financial loss for a business if action is taken against them.
However, for others, where there is a longer term strategy for a social media campaign, registration is advisable. Greater investment is being made in the campaign, and the impact of a successful campaign being hijacked or piggy backed by a competitor can be significant.
There have been numerous reports recently surrounding the Wyke Farms registration of “Free Cheese Friday” as a UK trade mark registration, widely reported as the first trade mark registration for a social media campaign. This has highlighted the value that Wyke Farms are attributing to their brand, which they have used extensively over a period of around 4 years through Facebook and Twitter campaigns. Reports have claimed that much of the evidence that had to be presented to the UK Intellectual Property Office to persuade them to allow registration related to the use of the Twitter hashtag #freecheesefriday. Wyke Farms recognised that the social media campaign had developed a cult following and that the Free Cheese Friday name had taken on a life of its own. Essentially the value of the brand had grown, and had become worth the investment of a trade mark registration to allow Wyke Farms to potentially take action should any competitors try and take advantage of the recognition this brand had established. Fortunately trade mark registration is an intellectual property right that can be sought after a brand/product has been launched, allowing brand owners to take a strategic view, and to change their protection strategy as business develops although the caveat here is that someone else may register first.
The remaining issues for brand owners are that if they seek registration, how do they ensure that they maintain validity? A key requirement for maintaining a trade mark registration are that use is made, and that that use is either by the registered owner, or under the control of the registered owner. For some elements of a social media campaign this may be fine, but the very nature of social media is that items are shared, and with Twitter hashtags there is active encouragement for third parties to use the hashtag in discussions, something which entirely removes the control of the trade mark from the registered proprietor. Whilst many businesses will have a strategy in place to monitor social media channels for use/mis-use of brands, it will become increasingly important for businesses who register, in particular, Twitter hashtags as trade marks, to monitor the use being made by third parties to ensure that it does not denigrate the brand, and that there is no mis-use by competitors, both of which would require prompt action. Whilst it will remain to be seen if this will be classed as exerting sufficient control to maintain a trade mark registration for, for example, a Twitter hashtag, it will be critical to have a clear and documented procedure to at least have an arguable defence to a claim that the trade mark owner has not been exerting control.
The internet and social media continue to present an ever changing landscape, with constant new challenges for the brand owner. Awareness of brand protection and use issues at the outset should enable businesses to develop effective approaches to brand selection for social media campaigns, protection strategies and monitoring/enforcement strategies. However, the ease and accessibility of this medium, and its rapid ever changing nature will mean that this will present a constant challenge even for the most forward thinking and proactive brand owners.