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Larissa Best and Catherine McGirr

No-one can ignore social media, and using them has become a must in the business world. Larissa Best and Catherine McGirr explain.

No-one can ignore social media. They are important not just for the younger generation—they are relevant to all ages. And using them has become a must in the business world. Larissa Best and Catherine McGirr explain.

It is no longer enough merely to communicate ‘to’ your customers and clients; it’s also important to ‘listen and learn’, test new ideas and respond to comments—good as well as bad—directly. As Eric Qualman, author of Socialnomics states: “We don’t have a choice on whether we do social media. The question is, how well we do it.”

The aim of this article is not to discuss the importance of proper protection of trademarks and brands in social media, but rather to consider what measures should be taken when looking for new trademarks, from both legal and marketing perspectives.

Before starting we must remember one important fact about trademarks: they are territorial limited rights. The Internet has challenged this. Even before the rise of social media, the web had virtually eliminated geographic isolation, creating a borderless cyberspace where territorial limitation is challenged. Search engines today take little consideration of where you are. Search results may be found for services next door, in your town or across the globe.

The rise of social media sites has added a further complication. Marketers used to control interaction with clients using one-way media such as television, radio, magazines and, in its earliest form, the Internet. Initially the Internet was controlled by academia and business, and the only interactivity open to the public was the ability to search websites.

With the arrival of blogs and then social media sites, control has extended beyond this small group and is now open to all. Twitter and Facebook, to name a couple, and virtual world sites, allow their members to adopt user names, and create personalised sub-domains, virtual products and avatars. Now anyone can create a username or app that could, in the future, be considered a nonregistered right. And as our children get older they will become more aware of the potential value of their intellectual property.

The erosion of territorial limitation and the opening of access to all have created a double headache for trademark searching, making it an even more complicated art form. Is it still safe to limit your search to your specific jurisdiction? Can research be limited to trademark databases only? How far do we need to search to be comfortable with the name selected?

While the IP industry has been concerned with potential infringement, cybersquatting and how to protect a trademark in this new medium, the marketing industry has fully embraced the new situation and harvested the opportunities presented. It is important that you think about how you want to promote your new product on social media in advance, to ensure that there is space.

But even if your new brand name is used on Facebook, Twitter and other social media sites, it’s not the end of the world. If you feel there is a likelihood of confusion you can follow the usual route for all types of trademark infringement.

Alternatively, you can see it as a great marketing opportunity. Coca-Cola did this when it discovered that a Facebook account had been started by fans and had grown into an extremely popular page. Rather than relying on legal action, Coca-Cola offered to partner in the management of the page, which has since gone on to become one of Facebook’s most visited.


When it comes to selecting a new trademark, social media must not be forgotten, from both the legal and the marketing points of view.

You must ensure, by checking user names and products, virtual or otherwise, that you are not infringing an existing right; this will also ensure there is a clear space for your new brand to enter the realm of social media and to grow.

Legally, you want to limit risks. In order to decide whether to proceed with your choice of mark it is necessary to be well informed about all pre-existing IP rights. This will include earlier trademarks that can be found in databases, but also “rights to a non-registered trade mark or to another sign used in the course of trade” (Art 4.4(b) of the European Trademark Directive).

Outside common law countries these rights have generally been limited to company and domain names. As social media sites are fast creating new avenues for names, products and brands it is now essential to consider these as part of your trademark clearance searches.

The aim of such searches is to clear the path to use and registration of your mark by revealing all problematic prior rights. It is better to be forewarned and prepared than ignorant. For example, you might not recommend a new trademark name that is identical to a very popular blog or gaming app.

Your client will, undoubtedly, also be concerned about the cloud that surrounds a certain term or slogan. If you are planning to launch a new product or even a new company, you will want to make sure that there is space for your chosen name in the world of social media. Is the name available?

Does it have an existing connotation in the social media world? If so, this could devalue the potential that the mark has to evolve in the social media realm. These steps may have already been conducted by the client or by the naming company, but sometimes the most essential tasks are forgotten or neglected.

When conducting a clearance search it is necessary to find out whether there are any identical matches to your proposed new trademark on the most popular social media sites, which will include Facebook, Twitter, YouTube and LinkedIn and regionally important sites such as XING in Germany. If your client plans to create an application at some stage then the Android and Apple App Stores should also be included.

The difficulty for a service provider, or anyone outside the specific industry, is to identify the current ‘hot’ social media sites, as this is rarely communicated by the final client. There are literally hundreds of social media sites out there. And how much is enough? It is possible to spend hours surfing the Internet without ever finding the exact information you need. While information can be obtained from standard Internet search engines this does not guarantee that the most pertinent results are found.

When relevant results are found, screen shots of the sites need to be captured. To help assess the importance of the results, information concerning followers, friends, tweets and other relevant activities needs to be reported. The more information you can acquire, the easier it is to evaluate the potential risk and to take the right decision.

Staying abreast of what’s hot and what’s not in the realm of social media is obviously more important in some industries than others. A higher degree of regulation in an industry will result in lower chances of finding potentially risky problems in social media sites that were not revealed by a traditional clearance search method.

There is also a correlation between the age of the industry (and, dare we suggest, the age of the clients) and the need for expanding the scope of search. More online searching will be necessary for the name of a new online game than for a pharmaceutical product.

Novelties and innovation always upset established procedures. The introduction of the new generic top-level domains threw the IP world into turmoil but people are now coming to terms with them and are looking for ways to include them in their daily work.

The same will happen with social media, but with an increasing number of elements that need to be taken into consideration, clearance searches are becoming more an art than a science. In order to make an informed decision about your trademark you need to see the overall picture, even if that picture has just become more pixelated. It is up to us to embrace our inner artist and stay in sync with this fast-evolving world.


Larissa Best is director, strategic relations & marketing at Avantiq. She can be contacted at: larissa.best@avantiq.com

Catherine McGirr is operations manager at Avantiq. She can be contacted at: catherine.mcgirr@avantiq.com

This article was first published on 01 May 2012 in World IP Review

social media, Twitter, Facebook, cybersquatting, trademark infringement

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