The Infringement of Trademarks Through Social Media - Free Essay Example

Infringement of Trademark through Social Media Under Section 3(1) of the Trade Marks Act 1976, a trademark is defined as a mark which is used or proposed to be used by a person who is possessing the right either as proprietor or as registered user to use the mark in relation to products or services so that the consumers can know about the connection between the products or services and the said person in the course of trade. Therefore, it can be said that the elements of a trademark is that it is a mark and it is used in relation to products or services in order to differentiate the products or services of a trade from its competitors.[1] Besides, according to the definition of the word à ¢Ã¢â€š ¬Ã…“markà ¢Ã¢â€š ¬Ã‚  provided under Section 3(1) of the Trade Marks Act 1976, a trademark can be words, brands, names, labels, headings, devices, signatures, numbers, letters or any combination thereof which is intended to be used to represent the identity of a trade. A t rademark can also include portrait of a person, sound, symbols, phrase and any designs.[2] A registered proprietor of a trademark is given an exclusive right to use the trademark in relation to his or her goods and services, he can also assign, license or franchise it to a third party.[3] Basically, if a person uses the trademark owned by the registered proprietor without any authorisation or consent given by the proprietor, such person is considered to have infringed upon the proprietorà ¢Ã¢â€š ¬Ã¢â€ž ¢s trademark.[4] The infringement of registered trademark occurs when there is an unauthorised use of the registered trademark or a mark which is highly similar to it in an advertising circular and also in relation to the products or services by any person other than the registered proprietor such that it will import a reference to the registered proprietor and result in deception as well as confusion among the public.[5] Thus, in order to establish a viable lawsuit against a trad emark infringement case, a plaintiff has to prove that the trademark under his possession is entitled to protection which means that it has to be a registered trademark and that the defendantà ¢Ã¢â€š ¬Ã¢â€ž ¢s use of that trademark is likely to deceive the consumers and cause them to confuse it with the plaintiffà ¢Ã¢â€š ¬Ã¢â€ž ¢s trademark.[6] In this era of technology, traders are able to advertise their products and services on popular search engines and other informational sites, or they can create their own corporate website to promote their products as well as to provide all the important information regarding their products. Since trademark is playing a vital role in advertising, trademark infringement had consequently shifted to the online world.[7] In recent years, due to the tremendous growth of social media, social networking sites which is deemed as a fantastic way to engage with consumers, have provided a platform where traders can have far reaching and budget-friendly mechanisms to promote their products or services. However, such great advantage comes with great risks as along with the increasing use of trademark in social media, the problems of infringement of trademark through social media have attracted considerable attention. Nonetheless, the Trade Marks Act 1976 and Trade Marks Regulations 1997 which govern trademark protection in Malaysia are silent on the issue of trademark infringement through social media. Unlike Malaysia, trademark protection on social media sites in the United States falls within the purview of the Lanham Act. The Lanham Act is the primary federaltrademark statute o f law in the United States which prohibits a number of activities such asfalse advertising, trademark infringement andtrademark dilution. Section 1125(a)(1) of the Lanham Act imposes civil liability on a person who uses any mark in relation to any products or services in the course of trade which will lead to confusion among the consumers. The provision under Section 1114 is similar to Section 1125(a)(1) but it is only applicable to marks registered with the United States Patent and Trademark Office (PTO). In order to successfully claim under either Section 1125(a)(1) or Section 1114, a plaintiff is required to show that the allegedly infringed mark is used in commerce, the plaintiff has the rights against that mark which such rights were established prior to any rights of the defendant the alleged infringement has caused confusion.[8] In the case of Tiffany (NJ) Inc. v eBay Inc.[9] which occurred in the United States, Tiffany sued eBay, an online marketplace for trademark infrin gement, claiming that eBay had allowed and facilitated the selling of counterfeit Tiffany products on its website. There is evidence indicating that eBay had removed immediately the sellers of counterfeit products from the listings on its site when it received notice from Tiffany. Tiffany argued that eBay should be held liable for the counterfeit products and it is the responsibility of eBay to police the listings on its own. The court however held that Tiffany as the trademark owner, was responsible to police its own brand and eBay must have direct control over the means of infringement in order for it to be charged with trademark infringement as the liability had to be premised on specific knowledge. Since eBay is a site which enables online transactions between those purchasers and sellers who are also members of eBay. It does not take physical possession of the products sold by the sellers on its website and it is the sellers who sell the products rather than eBay who merely pro vides service for the sellers without seeing or inspecting the products. Therefore, eBay could be deemed as not having specific knowledge and control over the means of infringement. This case was decided in favour of eBay whereby it did not infringe the trademark of Tiffany. Other than legal options, cases regarding trademark infringement on social networking sites can also be settled via mechanisms provided by the operators of the social networking websites and most of the social media sites have specific complaint procedures which enable the trademark owners to report to the website operators so that to remove or transfer those infringing accounts where their trademarks have been used without their authorisation. For instance, in LaRussa v Twitter,[10] Tony LaRussa, the baseball manager of St. Louis Cardinals, sued an unknown party who creating an account on Twitter using his name as the username and making bad comments about the players of his team. He claimed for trademark in fringement. However, the case was resolved shortly after the complaint was filed to the operator of Twitter whereby Twitter had disabled the username and transferred the domain name to LaRussa. Also, inOneok, Inc. v Twitter, Inc,[11] an energy services company, Oneok, filed a complaint in the court claiming that its registered trademark had been infringed by an unknown user who registered as Oneok on Twitter and posted information about the company. However, the complaint filed in the court was dismissed by Oneok the day after the infringement was reported to Twitter and the username was subsequently transferred to the company. Hence, it can be seen that by using the mechanisms available on the social media sites in resolving the cases of trademark infringement without bringing them to the court, it will be more advantageous to the trademark owners as it help to save cost and time. As a conclusion, a trademark is very important to every trader as it represents the identity and re putation of a certain business, since the trademark law in Malaysia is still inadequate to protect those trademark proprietors against infringement especially when it comes to social media, perhaps a new legislation pertaining to trademark infringement on social media should be passed by the government in order to provide protection for those trademark proprietors who advertise their products or services on social media sites as social media has become one of the important marketing tools for most of the businesses nowadays. Alternatively, the Trade Marks Act 1976 and Trade Marks Regulations 1997 which govern trademark protection in Malaysia can be amended so that their application could be extended to cover trademark infringement through social media as well. From the Tiffany case, it was stated that a trademark proprietor has the duty to police his own trademark. Thus, companies should implement a proper monitoring system to detect whether their registered trademarks are used by o thers without their consent or authorisation. There are also websites such as KnowEM.com and Adgooroo.com which provide effective tools for the companies in helping them to check the availability of their trademark on social networking sites and to provide reports when there are people bidding on keywords which tie into their trademarks.[12] Other than that, in order to prevent trademark infringement on social media, companies should be familiar with the social media sites and their policies concerning trademark use if they want to advertise their products on those sites. They should also take proactive steps to protect their trademarks by obtaining account names containing their trademarks on those social media sites before other people can obtain the account names.[13] Last but not least, other than bringing cases pertaining to trademark infringement to litigation which will be costly and time consuming, the companies can also use the tools within the social networking sites to re solves such cases so that the infringing accounts would be removed or disabled by the operators and this is deemed as an quite effective way in dealing with the problems of trademark infringement on social networking sites. List of references à ¢Ã¢â€š ¬Ã‹Å"What is a Trade Mark (or Brand)?à ¢Ã¢â€š ¬Ã¢â€ž ¢ (Intellectual Property Office, 13 June 2011) lt;https://www.ipo.gov.uk/types/tm/t-about/t-whatis.htmgt; accessed 5 August 2014 Ahmad Azizi bin Zulkefli and Sumah Ramachandran, à ¢Ã¢â€š ¬Ã‹Å"Trade Mark Protection in Malaysia A Basic Guideà ¢Ã¢â€š ¬Ã¢â€ž ¢ (Biotechcorp.com, 21 December 2009) lt;https://www.biotechcorp.com.my/wp-content/uploads/2011/11/downloads_aboutmalaysia/IP_Booklet_Trade-Mark_V1.pdfgt; accessed 5August 2014 Trade Marks Act 1976, s 35 à ¢Ã¢â€š ¬Ã‹Å"Is it Trademark Infringement?à ¢Ã¢â€š ¬Ã¢â€ž ¢ (Nolo.com) lt;https://www.nolo.com/legal-encyclopedia/is-it-trademark-infringementgt; accessed 7August 2014 Trade Marks Act 1976, s 38 Aishath Muneeza, à ¢Ã¢â€š ¬Ã‹Å"The Milestone of Blogs and Bloggers in Malaysiaà ¢Ã¢â€š ¬Ã¢â€ž ¢ [2010] 3 MLJ cvii 7. Yvonne Noorlander, à ¢Ã¢â€š ¬Ã‹Å"Calling a Halt to Trademark Infringement in Social Media International Reportà ¢Ã¢â€š ¬Ã¢â€ž ¢ (Intellectual Assessment Management, 9 October 2013) lt;https://www.iam-magazine.com/reports/Detail.aspx?g=dd57f6ce-e700-4a33-a04f-c77368c7ae03gt; accessed 7 August 2014 8. Nicholas Rodriguez, à ¢Ã¢â€š ¬Ã‹Å"Trademark and Copyright Issues Arising from Memetic Marketing on Social Mediaà ¢Ã¢â€š ¬Ã¢â€ž ¢(Acc.com) lt;https://www.acc.com/legalresources/quickcounsel/taciafmmosm.cfmgt; accessed 7August 2014 Tiffany (NJ) Inc. v eBay Inc. 600 F.3d 93 (2nd Cir. 2010) Louis Vuitton Malletier v Akanoc Solutions Inc. 658 F.3d 936 (9th Cir. 2011) 11. Darin M. Klemchuk and Roxana Sullivan, à ¢Ã¢â€š ¬Ã‹Å"Brand Enforcement on Social Networking Sitesà ¢Ã¢â€š ¬Ã¢â€ž ¢ (Americanbar.org,) lt; https://apps.americanbar.org/litigation/committees/commercial/articles/092410-klemchuk-sullivan-social-networking-brand-enforcement.htmlgt; accessed 8 August 2014 Jeanne L. Seewald, à ¢Ã¢â€š ¬Ã‹Å"Considerations When Using Trademarks in Social Mediaà ¢Ã¢â€š ¬Ã¢â€ž ¢ (Hahnlaw.com) lt; https://www.hahnlaw.com/references/a4cf7ae5-f892-49e9-99d5-29e9b4f73f72.pdfgt; accessed 10 August 2014 [1] à ¢Ã¢â€š ¬Ã‹Å"What is a Trade Mark (or Brand)?à ¢Ã¢â€š ¬Ã¢â€ž ¢ (Intellectual Property Office, 13 June 2011) lt;https://www.ipo.gov.uk/types/tm/t-about/t-whatis.htmgt; accessed 5 August 2014 [2] Ahmad Azizi bin Zulkefli and Sumah Ramachandran, à ¢Ã¢â€š ¬Ã‹Å"Trade Mark Protection in Malaysia A Basic Guideà ¢Ã¢â€š ¬Ã¢â€ž ¢ (Biotechcorp.com, 21 December 2009) lt;https://www.biotechcorp.com.my/wp-content/uploads/2011/11/downloads_aboutmalaysia/IP_Booklet_Trade-Mark_V1.pdfgt; accessed 5August 2014 [3] Trade Marks Act 1976, s 35 [4] à ¢Ã¢â€š ¬Ã‹Å"Is it Trademark Infringement?à ¢Ã¢â€š ¬Ã¢â€ž ¢ (Nolo.com) lt;https://www.nolo.com/legal-encyclopedia/is-it-trademark-infringementgt; accessed 7August 2014 [5] Trade Marks Act 1976, s 38 [6] Aishath Muneeza, à ¢Ã¢â€š ¬Ã‹Å"The Milestone of Blogs and Bloggers in Malaysiaà ¢Ã¢â€š ¬Ã¢â€ž ¢ [2010] 3 MLJ cvii [7] Yvonne Noorlander, à ¢Ã¢â€š ¬Ã‹Å"Calling a Halt to Trademark Infringement in Social Media International Reportà ¢Ã¢â€š ¬Ã¢â€ž ¢ (Intellectual Assessment Management, 9 October 2013) lt;https://www.iam-magazine.com/reports/Detail.aspx?g=dd57f6ce-e700-4a33-a04f-c77368c7ae03gt; accessed 7 August 2014 [8] Nicholas Rodriguez, à ¢Ã¢â€š ¬Ã‹Å"Trademark and Copyright Issues Arising from Memetic Marketing on Social Mediaà ¢Ã¢â€š ¬Ã¢â€ž ¢(Acc.com) lt;https://www.acc.com/legalresources/quickcounsel/taciafmmosm.cfmgt; accessed 7August 2014 [9] 600 F.3d 93 (2nd Cir. 2010) [10] Darin M. Klemchuk and Roxana Sullivan, à ¢Ã¢â€š ¬Ã‹Å"Brand Enforcement on Social Networking Sitesà ¢Ã¢â€š ¬Ã¢â€ž ¢ (Americanbar.org,) lt; https://apps.americanbar.org/litigation/committees/commercial/articles/092410-klemchuk-sullivan-social-networking-brand-enforcement.htmlgt; accessed 8 August 2014 [11] Ibid [12] Darin M. Klemchuk and Roxana Sullivan, à ¢Ã¢â€š ¬Ã‹Å"Brand Enforcement on Social Networking Sitesà ¢Ã¢â€š ¬Ã¢â€ž ¢ (Americanbar.org,) lt; https://apps.americanbar.org/litigation/committees/commercial/articles/092410-klemchuk-sullivan-social-networking-brand-enforcement.htmlgt; accessed 8 August 2014 [13] Jeanne L. Seewald, à ¢Ã¢â€š ¬Ã‹Å"Considerations When Using Trademarks in Social Mediaà ¢Ã¢â€š ¬Ã¢â€ž ¢ (Hahnlaw.com) lt; https://www.hahnlaw.com/references/a4cf7ae5-f892-49e9-99d5-29e9b4f73f72.pdfgt; accessed 10 August 2014