News

The IPR Center Report

Partners in Action

Volume 2, No. 3 • September 2009

Social Networking Sites vs. Brand Protection

Brand recognition and distinctiveness are primary reasons for trademark holders to use advertising. Advertising on the Internet has become the norm as it reaches millions of people worldwide on a daily basis.Today, Facebook appears to be the most popular social networking tool on the Internet; this popularity encourages companies to advertise their brand and products on this site with its large worldwide audience.

There has been considerable discussion in the trademark community of the impact Facebook has had on trademarks since June 13th, 2009, when Facebook started accepting registrations for URLs. Instead of random numbers being associated with user accounts, Facebook users became empowered to select any username to appear in the following format: www.facebook.com/ THISISANEXAMPLE. Trademark owners quickly became aware of the implications of Facebook’s new policy, most notably that a trademark name belonging to one brand could be selected by a third party, or even worse, a competitor. Some brands became aware of this emerging Internet issue and were able to notify Facebook prior to June 13, 2009, of their protected trademarks, making these marks ineligible to be selected as a username, but others may not have been so fortunate.

Currently, Facebook has an intellectual property infringement form to assist trademark owners in reporting usernames that infringe on their rights. Clearly the battle trademark owners must fight is evolving. As the rights holder’s brand becomes more popular and the number of Internet users continues to grow at a rapid pace, policies and practices will change to meet the challenges. There once was a time when many trademark owners worried about little more than trying to stop others from using their logo on a t-shirt. Even though that crime is still evident on a large scale, the Internet in general, and especially social networking sites like Facebook, expands the complex issue of trademark infringement for rights holders.

The risk that brands confront on the Internet is climbing rapidly and legitimate trademark holders do not seem able to keep up with the pace of the counterfeiters, especially as the cost of protecting their trademarks also increases. As new situations arise relating to trademark infringement, so too must those in charge of protecting trademarks adapt and change their brand protection strategies. Rights holders must keep abreast of the emerging issues relating to trademark infringement in order to protect their intellectual property. This may include looking at new laws to protect trademark owners or applying existing laws in a manner not contemplated when they were first enacted.

Rights holders continue to actively pursue methods to strengthen and protect their trademarks on the Internet. As law enforcement increases its use of the Internet as a means of investigating crimes, so too do counterfeiters use the Internet to reach a broader and more diverse consumer base. It is important that rights holders be aware of the ongoing battle that intellectual property industries face on a daily basis. While the Internet is a marvellous tool for legitimate companies to reach a huge consumer base around the world, it is just as easily a tool for unscrupulous infringers to fool customers, undermine legitimate product sales and hide from law enforcement.