25 May 2011

When it comes to trademark protection on social media sites like Facebook, many New Zealand companies are finding there are only the quick, and the dead.

Theodore Doucas of Zone Law and a consultant for Zone IP – an intellectual property management consultancy in Wellington – said securing trademark protection on social media sites is most often a case of ‘first come, first served’.

“New Zealand companies are increasingly finding that other people or companies already own their registered trademarks on social media sites like Facebook and Twitter.

“Some recent examples of companies trying to secure their registered trademarks as usernames on social media sites have also met with failure, specifically because those usernames are already being used by people in other countries.

“Trademark’s are territorial, so somebody in New Zealand cannot take your trademark and use it on Facebook. However, if somebody in Australia or any other country has the same trademark, then it’s a case of first come, first served.”

He said he had recently acted for a company saw its trademark being used by someone else on Facebook. A letter to Facebook had seen the social media company take swift action in deleting the infringing account.

“How well protected you are on sites like Facebook depends on how well your name is known. If you are an international name like Nike, then you pretty much have universal protection.

“If however, you are a minnow, you don’t enjoy any international protection.”

Mr Doucas said that in the case of one company owning a trademark in New Zealand, and another owning the same trademark in Australia, one course of action may be to register the trademark in the USA.

“Trademarks registered in the USA seem to carry a bit more weight with social media companies which are based in that country, so they may consider your case more favourably – it’s worth having a crack.”

Facebook, for example, offers a "Preventing the Registration of a Username" form for companies with registered marks. Once filled in the form gives some protection against people in other countries registering the same mark on their site.

Mr Doucas said the issue is similar to those that arose at the beginning of the Internet, where people were taking other people’s registered trademarks as domain names.

“With social media you are dealing with private companies and they really are the judge, jury and executioner when it comes to trademark protection on their sites.

“Some companies however, like Facebook, have chosen to take the issue seriously, provided you can prove you have a greater claim to the trademark.”

He said motive is also important. If it can be proven that the person infringing the trademark is doing so for nefarious gain, then those social media companies that take trademark infringement seriously will probably act.

ENDS

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