Trademarks – The Internet and Social Media Platforms

Social media platforms (LinkedIN®, Facebook®, Instagram®, Twitter®, TikTok®, WeChat®, etc.) are used “to facilitate the sharing of ideas, thoughts, and information through the building of virtual networks and communities.”[1] They are also used for customer engagement and satisfaction[2], meaning allowing you to effectively communicate with the masses, as well as market your brand. As noted by one of the leading social media management platforms, “customer engagement is shifting to social. The value of social media has extended beyond the marketing department and now sits as a central part of the customer and employee experience.” [3] That said, how you protect and enforce your brand, and more importantly your trademark portfolio is vital, for a number of reasons:

1. Trademarks help you distinguish your products and services from those of competitors and help identify you as the source;

2. Trademarks allow consumers the ability to identify (by word, logo, slogan, packaging, or other indicators of origin) which product or service they would like to purchase or to avoid purchasing, as well as prevent confusion amongst consumers (or likelihood of confusion);

3. Trademarks are very effective against unfair competition and passing off;

4. Trademarks are good communication tools in that they allow consumers to easily select products or services amongst other similar products or services;

5. Trademarks are business assets, which can appreciate over time. They can be bought and sold, they can be pledged (as a security), as well as licensed (e.g., merchandising, endorsements and sponsorships, co-branding promotions, contests, etc.);

6. Contrarily to patents and industrial designs, trademarks are relatively inexpensive to protect. Once registered, they have a potentially infinite lifespan with the filing of renewals. Renewals can be filed every 10 years after registration in Canada; and

7. Trademarks allow businesses to most effectively utilize the Internet, and make use of ICANN (or UDRP) Internet domain disputes[4].

Trademark enforcement

As the Internet has the potential for widespread unauthorized use of your brand, you must constantly be policing (e.g., monitoring) both proper use of your brand and infringements of it. Unauthorized uses of your trademark may consist of: (a) displaying your trademark(s) on another product and/or service (e.g., counterfeits and design knockoffs, grey market goods, etc.), (b) embedding your trademarks in meta-tags and/or hidden text[5], amongst (c) other unauthorized uses. In such cases, it is best to Contact Us to explore the various legal recourses available to you.

With respect to unauthorized use of your trademarks on social media platforms, there are multiple ways to address the issue; for example:

1. Sending a demand letter to the wrongdoer (e.g., that is if they can be found);

2. Making use of the Social Media Trademark Policy; and/or

3. Commencing enforcement proceedings against the wrongdoer.

Social Media Trademark Policies

For those seeking to enforce their trademark rights on social media, it is important to both know and understand the trademark policies of the major social media platforms. Doing so will allow a trademark owner to efficiently enforce their trademark rights on any infringing parties.

1. Twitter[6] – Twitter’s trademark policy forbids the use of a trademark in a manner, which would falsely give the impression that the infringing party is associated with the brand in question. Anyone found using a trademark in such a manner can be reported and may be suspended from using the platform;

2. Facebook[7] – According to Facebook’s trademark policy, infringement occurs when the follow three criteria are satisfied: (1) the trademark is being used without permission; (2) the unauthorized use of the trademark is in commerce; and (3) the use will likely cause a confusion as to the infringing party’s association to the trademark. All violations may be reported to Facebook and the infringing content may subsequently be removed;

3. LinkedIn[8] – LinkedIn’s trademark policy simply invites individuals who, in good faith believe that their trademark rights have been infringed, to report the infringement;

4. Pinterest[9] – Pinterest may suspend accounts that violate trademark rights by using the trademark as a username or in any of their other content;

5. Instagram[10] – Instagram forbids users from posting anything that may violate another party’s trademark rights. Users may report any trademark infringement to Instagram by completing an online form;

6. YouTube[11] – YouTube forbids its users from using trademarks in videos in a manner, which would cause confusion regarding the association between the video, and the trademark;

7. TikTok[12] – TikTok’s trademark policy prohibits trademark infringement that would likely cause confusion regarding the association of the user and the trademark. Nonetheless, it is permissible for a TikTok user to use a trademark to reference the trademark or to comment, criticize, parody or review the goods or services associated with the trademark;

8. Tencent[13] – Tencent’s intellectual property policy reminds individuals to respect third party intellectual property rights[14]. In addition, WeChat, the social media platform developed by Tencent, prohibits its users from violating any third party’s intellectual property rights, specifically by using a username that would violate such rights; and

9. Twitch[15] – Twitch’s trademark policy simply states that a trademark used without the trademark owner’s permission constitutes a violation of their policy.

Lastly, it is worth mentioning that one common thread in each trademark policy belonging to these social media platforms is the fact that they expressly state that they will not mediate or adjudicate the dispute between the parties. In this regard, it is oftentimes more appropriate for parties to communicate with each other, either directly or indirectly, by way of their legal counsel.

About us

Durand Lawyers brings Law & Business Together. We are a law and business advisory firm specialized in intellectual property, business strategy, as well as civil and corporate law. We are uniquely positioned to help clients in emerging technology industries such as FinTech, SaaS, blockchain and cannabis, employing both lawyers and experienced entrepreneurs to get the best possible outcomes. For more information visit our website at www.durand-lex.com. We are also involved with the LES and FORPIQ.

[1] https://www.investopedia.com/terms/s/social-media.asp. [2] https://socialnomics.net/2017/07/14/the-role-of-social-media-in-customer-engagement/. [3] https://hootsuite.com/pages/landing/future-of-customer-engagement. [4] https://www.icann.org/resources/pages/help/dndr/udrp-en. [5] Red Label Vacations Inc. (Redtag.ca) v. 411 Travel Buys Limited (411 Travel Buys Limited), 2015 FCA 290; BCAA et al. v. Office and Professional Employees' Int. Union et al., 2001 BCSC 156 ; Boaden Catering v. Real Food, 2016 ONSC 4098. [6] https://help.twitter.com/en/rules-and-policies/twitter-trademark-policy. [7] https://www.facebook.com/help/440684869305015. [8] https://www.linkedin.com/help/linkedin/answer/30365/linkedin-s-trademark-policy?lang=en. [9] https://policy.pinterest.com/en/trademark. [10] https://www.facebook.com/help/instagram/188234407991837?helpref=breadcrumb [11] https://support.google.com/youtube/answer/6154218?hl=en. [12] https://www.tiktok.com/legal/copyright-policy?lang=en. [13] https://www.wechat.com/en/acceptable_use_policy.html. [14] https://www.tencent.com/legal/html/en-us/property.html. [15] https://www.twitch.tv/p/legal/trademark-policy/.