Trademark infringement in social networks – A Swiss law perspective
AUTHORS:
Sargsyan Mane, LL.M UC Berkeley, PhD Candidate at the University of Zurich (Switzerland);
Antreasyan Sevan, Attorney at Law, PhD Candidate at the University of Geneva (Switzerland).
#trademark #infringement #social_networks – A Swiss law perspective
INTRODUCTION
Social networks, led by Facebook and Twitter, are used throughout the world by billions of people[1]. They became essential for companies to promote their brands and thus are an important advertising vehicle[2]. In this respect, trademarks are widely used by companies in social networks, e.g. as their usernames or in the content of pages or posts. However, they are also used by other users of social networks, who may freely discuss and comment on products and services of such companies or who may register an account identical or similar to a third party trademark. It is thus important for brand owners to monitor uses of their trademarks in social networks and to be aware of when an infringement might occur[3] and what remedies may be sought in case of infringement.
This article will first analyze when – and under what conditions – a trademark infringement occurs under Swiss law, in view of relevant U.S. and European case law and literature: in the context of usernames (A) and hashtags (B). It will then present the private mechanisms available to trademark owners to protect their brand (the examples of Facebook and Twitter will be scrutinized) (C). It has to be noted that such private mechanisms may prove to be a more adequate solution then traditional judiciary proceedings for commercial and publicity reasons[4].
[1] As of the end of 2013 Facebook had 1,15 billion users (http://socialmediatoday.com/jonathan-bernstein/1894441/social-media-stats-facts-2013), and 400 million of “tweets” are published daily (http://socialmediatoday.com/jonathan-bernstein/1894441/social-media- stats-facts-2013).
[2] For example through social media endorsements or by targeting users based on their online behavior, and integrating tailored commercial communication with the social context of their platform activity. For statistics on the influence of social media on consumers’ transactional decisions, see Vision Critical, From Social to Sale, reporting on 2012-2013 survey responses on social purchasing behavior, available at: http://www.visioncritical.com/sites/default/files/pdf/whitepaper-social-to-sale.pdf.
[3] A passive approach to a trademark infringement may not be commercially sound, but may also lead to losing some rights to a trademark.
[4] For more information and practical examples, see Richard Burton, Social media usernames and brand protection strategies, Apr. 23, 2013, available at: http://www.lexology.com/library/detail.aspx?g=c549d5ce-218a-4867-ad53-8e604b99c8d0; Geri L. Haight, United States: Trademark Enforcement, Trademark “Bullies” And Social Media, Dec. 5, 2011, available at: http://www.lexology.com/library/detail.aspx?g=45ce48dc-ea5e-41bf-b63b-9ee76442c2a9; Adam Smith, Engage: trademark protection in social media, Nov. 4, 2009, World Trademark Review, available at: http://www.worldtrademarkreview.com/daily/detail.aspx?g=2f533ff5-62e5-48ed-b1fd-c7b3512199ec.
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CONCLUSION
The legal issues related to usernames, URL post domain names, and hashtags can be interpreted in the context of judicial and scholarly developments pertaining to trademark infringements in domain names, metatags and keyword advertising, offering convenient tools to be applied by analogy.
In summary, the decisive criterion to assess trademark infringement – in the context of usernames and URL post domain names – is the commercial use, which prevails when they are used for advertising purposes. Provided this condition is fulfilled, the identification function (which can be determined according to the criteria applicable to domain names) and the likelihood of confusion (which is assessed in consideration of the relevant website’s content) have to be affected in order to declare a trademark infringement. Consequently, fan pages will rarely fall in the scope of the TmPA. On the other hand, trademark disparagement may be prohibited by virtue of well-known trademarks' protection (article 15 of the TmPA). In this respect, it can however be concluded that while weighing the interests involved in trademark law and freedom of expression, the courts may appear cautious and not provide excessively generous protection to trademark owners.
With regards to hashtags, commercial use is again a decisive component of the trademark infringement’s assessment. A distinction has thus been drawn between free use and paid use. In the first case, a commercial use may occur in case the post including the hashtag links to a website offering products or services. In the second case, commercial use shall be implied. Additionally, for the infringement to take place, the other conditions of trademark infringement, developed in the context of metatags and keyword advertising, shall apply.
Last but not least, it can be inferred that the private mechanisms for trademark protection introduced by certain social network operators, such as Facebook and Twitter, even though not without flaws, can prove to be efficient and less costly alternatives (compared to traditional proceedings) to protect ones trademark rights.