How to protect your company against digital trademark infringement

Digitalisation and globalisation have brought fantastic business opportunities. New commerce concepts and marketing possibilities spring up constantly. Never in history have the conditions for rapid global growth been as good as they are now.

However, digital development also creates vulnerability and increased threats to businesses. If companies fail to protect themselves and take effective actions, they risk their brand becoming diluted and their competitiveness being damaged – which can obviously have economic consequences.

But there is also good news: if you work strategically and effectively in this area there is much to be gained. For example, you can increase control over your brand and its reputation, improve your competitiveness, and, ultimately, increase profits.

According to a survey by CompuMark – an organisation that works with trademark research and protection – 85% of the brands experienced online trademark infringement during 2019. That’s an increase from previous years.

The most common types of trademark infringement were:

• Domain name infringements (44%)
• Social media (38%)
• Online marketplaces (38%)
• Advertising campaigns (34%)

Domain squatting – when domain pirates register a domain name with another company’s trademark for financial gain – is nothing new. One thing that’s often missed, however, is that there can be motivations for squatting a domain other than selling it to the trademark holder. Sometimes squatters will use these domains for fraudulent purposes, such as spreading fake news, email fraud, or phishing (capturing visitors’ sensitive personal information).

You can read about some real-life examples here!

In the event that a site’s contents are clearly and obviously damaging to a company, then a direct ‘take-down’ by the registrar or webhost is a possibility. Unfortunately, domain pirates often operate in a grey zone: their actions are legally dubious without being indisputably illegal. That makes it harder for trademark holders to pursue a legal resolution. For legal action to be successful, there are many requisites that must be fulfilled. Domain pirates are often well aware of these requisites, and use them to their advantage.

Something that we see all too often is how trademark registers are apparently monitored by bad actors. When new applications are published, hijackers quickly buy up the .com domain and then offer to sell it to the trademark holder. Normally, the price is considerably higher than the actual cost of ownership but less than it would cost to pursue the matter through a dispute resolution (UDRP). Read more about UDRP here!

Infringements via social media can involve everything from hijacking usernames to using hashtags of well-known brands to attract traffic. It’s worth knowing that sites such as Instagram have their own internal processes for dealing with these infringements that are often fairly effective.

Advertisement campaign infringements includes situations where someone will post an ad on Google, using a trademark illegitimately in the ad text to attract attention. Google has its own procedure for dealing with this, and also offers the possibility of locking trademarks, so that they can only be used by approved parties.

How to protect your business:

Below we provide a few recommended actions:

1. Everything begins with making sure that you have the right rights. It’s vital that your trademarks cover the things you need – geographical regions and product classes for instance. Included in this should be your digital trademarks: your domain names.
2. Create a policy for long-term, secure management of your digital assets. Make sure you establish what you need to protect, where and how you will protect it, and how the policy will be maintained over time.
3. Internal training is important. If you train your staff properly, you can make use of their online reach to quickly pick up on any infringements and take effective action if they notice something suspicious.
4. Establish an infringement strategy that dictates when and how actions should be taken. For instance, in what circumstances do you proceed with a take-down rather than a dispute resolution?
5. Watch out! Being alert is an investment that often pays off. It’s not possible to protect yourself against everything, so targeted monitoring can be a powerful tool for early detection and action. Monitor things such as trademark registers, domain registers, online marketplaces and social media to get control over the context in which your brands and trademarks are used.

It is important to understand that this is a continuous process and requires constant attention.

At AWA and Dotkeeper, we are experts in comprehensive trademark protection – both online and offline. We know how to help you stay safe and protect your business’s trademarks. Our knowledge and competencies are global and we have offices around the world, including in Asia where a lot of these problems originate.

Please get in touch!

Sources:

https://www.wipo.int/sme/en/documents/branding_fulltext.html