TRADE MARKS ON SOCIAL MEDIA

What is a trade mark?

Let’s start from the beginning: what are we talking about when we are talking about trade marks?

A trade mark is a sign which can distinguish products or services of one undertaking from those of another. It can take many shapes: it can be a name, a catch phrase, a logo, a sound, or even a combination of any of these elements.

The most important characteristic of a trade mark is that it should be distinctive: a generic word which refers to the type of products or services for which the mark will be used is probably not going to be protected as a registered trade mark. For example, having the word “Gaming” as trade mark for a YouTube channel on video games is not going to be protectable since it is very generic.

Trade marks and copyright Trade marks and copyright are two distinct types of IP rights, and they do not protect the same elements of your channel: Copyright protects original works, so it applies to any artistic creation, as long as it is new and original. Therefore, the content which you upload to your Instgram or YouTube will be protected under copyright, as long as it is not a copy of preexisting works. Trade marks do not protect the content of a channel. They have a very specific role which is to act as sign of origin to make sure people do not confuse the products or services of two competitors.

 

What are the benefits of having a trade mark for online content creators?

As said above, a trade mark distinguishes goods and services. Having a strong and recognizable trade mark has several benefits:

• Providing personality and identity to your YouTube or Instagram account requires that you have a name, brand or logo with which viewers and followers can recognize you easily.
• Having a strong brand can also help the expansion of your channel to new social media platforms. If you have a successful Instagram account and you decide to open a Youtube channel, your fans are more likely to find your new channel if they can recognize your brand.
• It also makes possible the diversification of activities outside of social media platforms, such as selling merchandising.
• Finally, having a strong brand also gives the tools to the most successful influencers to create new sources of income by allowing others to use their brand through trade mark licensing.

Why should you protect your trade mark?

The benefits which we have described above really only apply to trade marks which are protected, in the sense that others cannot copy them freely. If they can, your trade mark loses most of its value since it can no longer serve as a distinctive sign allowing your followers or fans to find and recognise your original content.

Therefore, it is important to make sure that other people cannot copy your trade mark, and the best way to ensure this is through trade mark registration. There can be some level of protection for unregistered trade marks but registration is the better option, which is why all the major brands that you know are registered as trade marks.

Where and how should you register your trade mark?

Now that we have seen that trade marks are protected through registration, the next question is where and how.

Every country (or almost every country) has an Intellectual Property office where you can register your trade mark. It is important to remember that trade marks are territorial rights: they are only protected in the territories in which they are registered. A trade mark registered in Spain will have no legal weight in France or in the US. That is why it is important to make sure that you trade mark registration strategy covers all the countries you are interested in. Registering your trade mark with the European Union Intellectual Property Office (EUIPO), while more costly than only registering it in one country, will however ensure that your trade mark is protected in all 27 EU Member States.

 

Trade mark registration is a rather simple process, which you can do online from your house.

• First, you have to take into account that trade marks are registered for certain products or services which you would have to define. Registering a trade mark for shoes or for drinks is not quite the same. You should therefore ensure that you know for which products and services you wish to register your trade mark.
• Secondly, you have to conduct a trade mark search, to make sure that the trade mark you want is not too similar to a pre-existing trade mark registered for products or services similar to yours. You can do this on publicly available databases such as TMView.
• Once you have checked that your trade mark is indeed sufficiently distinctive and not too similar to any pre-existing one, you can now proceed with registration.

As the owner of a trade mark, it is your responsibility to make sure that third parties are not infringing on your rights, and to take actions against those who do.

How can you act when you see someone is infringing on your trade mark on social media?

As you know, millions of new videos or posts are created and published on social media every day. It is therefore inevitable that infringing content will be uploaded there every now and then. Social media platforms, be it YouTube, Instagram or TikTok all have systems to tackle this problem.

These platforms have created specific tools to allow trade mark owners to file a complaint directly with them if they spot a video or post which infringes on their trade mark. This tool is a form in which the trade mark owner can state that a specific video, post or channel, is using his or her trade mark without consent in a way which infringes his or her rights.

Typically, such a form will require the trade mark owner to provide the following information:

• Personal Details (name, contact details, etc.)
• Information on the trade mark in question. Here we can see the usefulness of registering your trade mark: YouTube, Instagram or TikTok are much more likely to intervene in cases of infringement of a registered trade mark. In cases of unregistered trade marks they probably would not be as proactive, since it can be a lot more complicated to check the validity of the claim: you would have to demonstrate that the brand in question is indeed yours, and that its use by another amounts to an illegal act of unfair competition.
• Information on the content. Here the trade mark owner has to provide links to the content which is claimed to be infringing on his or her trade mark, and the reasons for which he or she considers that the content should be pulled out of the platform.

Once the claim has been filed, the platform may conduct a limited investigation to ensure that the claim is not fraudulent, in the sense that it has been filed in good faith. YouTube, Instagram and TikTok are unlikely to pull content out unless it is a relatively clear case of trade mark infringement.