As a company grows and becomes more well-known, its reputation becomes more valuable. Filing trade marks to protect brand names and logos is now common place, but companies need to look at different ways of protecting its brand simply beyond having a robust trade mark portfolio.
One way is to monitor how the brand is used online.
It goes without saying that a company wouldn’t want another business using its brand name or logo in connection with its goods or services without authorisation.
Companies are becoming more aware they need to take action where intellectual property (IP) rights are infringed. This includes stopping the infringement and avoiding situations where the company is deemed to have consented to such third party use. This is known as acquiescence in trade mark law.
What can be done?
When looking at the online world and a company’s online presence, protecting the brand becomes somewhat trickier to manage. So what can be done?
A new business will often register a domain name or two to reflect the name of its business or main brand (i.e. JAG Shaw Baker might register JAGShawbaker.com and JAGShawBaker.co.uk) and then wash its hands of the world of domain names. This is a mistake.
While during the early stages of a company’s life focusing only on these two domain name registrations may suffice, in a few years’ time when the business has grown, infringers and cybersquatters are likely to move in and start registering domain names that infringe your rights, like JAGShawBaker.co.uk, JAGShawBaker.eu. And, let’s not forget the more up-market world of new generic top level domains – JAGShawBaker.company and JAGShawBaker.london.
These infringers and cybersquatters are in it for various reasons. Cybersquatters want to sell the domain name back to the brand owner for a profit. Infringers want to use the domain name to create confusion amongst consumers and gain value from the brand owner’s reputation, having attracted the unsuspecting consumer to their website using the brand owner’s good name.
It’s a problem that has the potential to grow and grow and can be time consuming to manage. For some companies, like big corporates, it’s a problem that can’t necessarily be fixed, only managed.
Such companies often have teams dedicated to patrolling the internet to play whack-a-mole with domain names infringing their brand. It can seem like a futile exercise at times, but it does have its place in brand protection.
For smaller companies, hiring a team will not be possible and online monitoring will unlikely be a commercial priority; however, paying some attention does pay off.
Tune in for part 2 of Protecting Your Brand Online. In this post we’ll delve into some practicalities for companies wanting to keep its brand safe and protect its space online.
The information in this blog post is provided for general informational purposes only, and may not reflect the current law in your jurisdiction. No information contained in this post should be construed as legal advice from JAG Shaw Baker or the individual author, nor is it intended to be a substitute for legal counsel on any subject matter.
The post was written by Charlie Lyons-Rothbart, Associate at JAG Shaw Baker.