Entities are using social media platforms such a Facebook, Instagram and Twitter more frequently to promote their goods and services. Social media is a cost effective method of advertising and savvy use of social media can expand a business’ reach and audience to a great extent. It has the potential to immediately reach and engage the public and it creates an environment whereby consumers can interact instantaneously and directly with the business or company.
The sharing of content on platforms such as Facebook, Instagram and Twitter is easily done, however there are important intellectual property issues arising from such social media use. These issues include the need for careful protection of one’s intellectual property and ensuring that one does not infringe other person’s intellectual property.
One important intellectual property right is embodied in a trade mark. A trade mark is a distinctive sign that allows the public to identify the goods and services that an entity provides. A trade mark can consist of an entity’s name and/or logo, a product name, a tag line, or even a colour.
Infringement of trade marks
The terms of use of social media platforms Facebook, Twitter and Instagram’s state that the proprietor owns all of the content and information that is posted. All three platforms have reporting mechanisms to report infringement of any intellectual property rights.
Infringement of a trade mark occurs when a person who, not being the proprietor of the trade mark or a person authorized by the proprietor, uses a sign in the course of trade that is:
- identical with the trade mark, in relation to goods or services that are identical with the goods or services for which the trade mark is registered;
- likely to deceive or confuse the public for the reason that the sign is identical or similar with the trade mark and is used in relation to goods or services that are identical or similar to the goods or services for which the trade mark is registered; or
- is identical with or similar to the registered trade mark but the goods and/or services are not similar to the goods or services of the registered mark; and the registered mark has a reputation in Jamaica and the use of the trade mark takes unfair advantage of, or is detrimental to, the distinctive character or the reputation of the trade mark.
It is important that when posting on social media platforms one is not infringing another’s trade mark(s). Searches can be conducted online or at the Jamaica Intellectual Property Office before use or registration of one’s trade marks.
Protecting your trade marks
Trade mark protection is significant in Jamaica under three circumstances. These include when the proprietor:
- has a registered trade mark in Jamaica; or
- has established goodwill for an unregistered mark through long term use in Jamaica; or
- the trade mark is well-known and is entitled to protection under the Paris Convention or the World Trade Organization Agreement.
Once a trade mark falls under one of the above mentioned categories, no other person or entity will be able to use an identical or similar mark for identical or similar goods and services. It is important to note that protection for an unregistered mark through established goodwill can be sought, however it can be more difficult to establish and prove in a dispute, and it is easier to simply register your trade mark.
A trade mark generally protects specific goods and/or services for which it is registered. Therefore, it is very important that all of the goods and/or services that the proprietor will want to use the mark for are identified when registering a trade mark. A trade mark will not be protected for a good or service for which it is not registered.
The current classification system that is being used for the registration of marks is the 11th edition of the NICE classification, where each type of good and service has a specific class in which it is registered. For example, in relation to advertising, advertising material such as printed paper signs, advertising posters, advertising signs of paper, advertising signs of cardboard are registered in class 16. This class covers printed advertising material, but does not include advertising on social media. There is no specific class of goods that will cover advertisements or posts on social media. Therefore, in registering a trade mark, careful research must be done to ensure that the mark protects goods and/or services as much as possible and to ensure that online use is covered.
Most social media platforms have explicit policies that state that accounts which infringe on the rights of another will be suspended. Even so, there is likely to be no liability attached to the social media platform, unless they are the party involved in the creation of the infringing content.
With the advent of social media platforms, content of all kinds can be shared instantaneously to a large audience. The person who posts the content will then generally lose control over the content as the content can be easily re-posted, re-tweeted and shared amongst users. Content, including trade marks can then be copied and used by third parties. It is very important that trade marks are registered in the correct classes. This facilitates the effective protection of marks by the reporting of infringers of their intellectual property rights to the social media platform additionally; claims for infringement can also be brought against unauthorised use of their marks. Registering a trade mark also prevents other parties from registering similar and/or identical marks thereby taking advantage of any goodwill that may be associated with the mark.
Helen Liu is an Associate at Myers, Fletcher & Gordon, and is a member of the firm’s Commercial Department. Helen may be contacted via helen.liu@mfg.com.jm or www.myersfletcher.com. This article is for general information purposes only and does not constitute legal advice.
