Introduction
The explosion of social media usage has transformed the way products and services are marketed and how businesses interact with consumers to promote their brands. It has also resulted in increased instances of online trademark infringement.
As a brand owner, you may be more familiar with the following benefits of owning a trademark registration: (1) right to the exclusive use of the trademark Canada-wide; (2) presumption of ownership and validity = generally lower costs of enforcement; (3) additional rights and remedies versus unregistered trademarks; (4) monitoring of confusing trademarks by the Registrar of Trademarks; (5) increased value and goodwill / a potential income source (licensing, franchising, selling your company, attracting investors).
What tends not to be as well-known is how owning a trademark registration can be particularly useful and an invaluable asset when it comes to protecting your brand on social media.
Trademark infringement on social media
Whether your business has itself been a victim of the unauthorized use of its trademark or a personal, leisurely scroll through social media has caused you to pause and question whether the use of a trademark is authorized and legitimate – a deal being "too good to be true" – trademark infringement on social media is rampant.
Nearly all, if not all, social media sites have policies and procedures in place to deal with intellectual property infringement. Tangibly, the process generally consists of completing and submitting a "take down request" directly through the platform in question. The site examines the requests that are submitted and renders a decision, which is to either take down the allegedly infringing material or refuse the request.
Some of the information to be provided in the take down request is more basic (e.g. providing the contact details of the person submitting the request and identifying the allegedly infringing subject matter) while other information is more complex/formal (e.g. specifying the grounds for requesting the take down, identifying the relationship between the person submitting the request and the holder of the intellectual property rights). Another critical element is proof of a trademark registration (e.g. country of protection and registration number). The majority of sites requires this obligatory information in order to submit the take down request. The unauthorized use of a trademark absent a registration is typically not enough. Even a pending trademark application is insufficient.
Taking action
If you want to do something concrete about the problem of unauthorized use, not owning a trademark registration means other more formal, legal recourses have to be considered. This translates to significantly longer delays and considerably greater costs, not to mention the list of adverse effects to your brand: damage to brand reputation and goodwill, loss of distinctiveness (brand dilution), confusion in the marketplace, financial loss.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
