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2 December 2016Trademarks

IP Summit 2016: Why trademark letters can backfire on social media

Traditional enforcement strategies, such as demand letters, may backfire in a social media context, and trademark owners attempting to assert their rights could be accused of bullying.

This is the opinion of Julia Matheson, partner at Finnegan, Henderson, Farabow, Garrett & Dunner, who chaired a panel yesterday, December 1, at the IP Summit 2016 in Brussels.

When companies send a demand letter, they must be “incredibly careful about the tone”, she said.

“You must think [about the] broader context: what is the particular impact on the person I’m sending it to, and the circle they are involved with or communicate with,” said Matheson.

She provided Nutella as an example of policing gone wrong.

In 2007, a fan created ‘World Nutella Day’ to celebrate the product.

Six years later, in April 2013, the company sent the blogger a cease-and-desist letter with “very strong demands”. The blogger announced she was darkening her page and this was met with an “incredibly negative” response.

According to Matheson, less than a week later, the company dropped its cease-and-desist request.

Matheson added that it was impossible to monitor the entire internet, and brands must be strategic.

With the advent of social media and the internet, there are numerous opportunities for companies, but also a loss of control over brands.

“With social media, companies no longer control their own brand story. The brand story is in the hands of the consumer as much as it is the owner,” said Matheson.

Caroline Perriard, CEO of consultancy BrandIT Consult and former global counsel for Nestlé, agreed and advised companies that it is vital to build a defence and protection strategy for their brands.

She explained that even if you’re not selling online, your goods will still appear online, meaning it is “very important to know where your product and brand is”.

Perriard advised identifying the abuses important to a company by using a detection strategy that is “reasonable” for the brand, the team and the resources available.

“Tackle the most important abuse,” she said, adding that companies should stick to the abuse that is “really damaging the brand”.

Chris Butler, former chair of the UK Music Publishers Association, also joined the panel. He explained that the music industry has reached a “tipping point” with more products sold digitally than physically.

“The emergence of social media has been transformative,” he said. “We have to maintain this balance between promotion … and monetisation. When infringement is so easy, protection is so difficult.”

The IP Summit ends today.

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