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Website-based enforcement

If another party builds a website and that website features your registered trade mark, because it supersedes a domain name, you can take action to have the website taken down. This is reasonably straightforward because of the fact that, in the main, the infringed trade mark is visible within the site’s URL or content. There are various domain tools which we use to investigate and take action against parties which infringe our clients’ trade marks.

 

Another aspect of website enforcement is more complex in that, in some cases, the infringement is difficult to find. This is where the skills of a trade mark attorney come to the fore as we can use specialist software to work through the vast amounts of information and, often unhelpful noise, generated by searching. Our work in this area is to ensure that we find a clear strategy and create suitable priorities of action for our clients to take against individuals who infringe trade mark rights and protect their interests.

On a website, a trade mark has to be used in such a way that it actually does infringe its owner’s rights. A specialist attorney can help to determine the extent to which your ownership rights have been infringed and advise on the appropriate - and most effective - course of action.

 

Keltie offers expert search services to help clients uncover and take action against online infringement. Using the skills and software at our disposal, we conduct deeper level searches than standard search engines in order to locate any element of our clients’ trade marks which is being infringed online. Our work in the initial searching and filing of trade mark applications means that we have a depth of knowledge and information about each mark, and can therefore quickly assess the degree to which any infringement has occurred.

 

With website-based enforcement, there are realistically only a couple of options available. We would contact the website’s registrant and demand that the infringing site is taken down but if they are unwilling to do so, then legal proceedings would likely follow. Infringement proceedings can be costly, but the reputational value of trade marks can outweigh the financial burden of taking formal action against an infringing party.



Marketplace enforcement

Your trade mark rights can also be infringed if they are used without permission on online platforms or marketplaces, such as Amazon and eBay, either in product names, links or descriptions. Here, our enforcement work is linked to the IP-related policies of the platforms themselves. Whereas previously, intellectual property protection was somewhat lacking from the formal documentation of online commerce platforms, it is now much more detailed and gives trade mark owners more options to pursue those who infringe.

 

In order to create a seller’s account on many websites, you must acknowledge and agree to their policies on intellectual property. Often, this acknowledgement from the seller (and potentially infringing party) means that takedown action can be achieved more simply and negates the need for formal proceedings. Most platforms also now included simple, form-based mechanisms to allow trade mark owners to demonstrate infringement and initiate takedown procedures.

 

Provided you have a registered trade mark and your trade mark portfolio has been put together by an expert attorney from Keltie, it can be relatively straightforward to demonstrate that you have suffered reputational damage or that another party has gained an unfair advantage by infringing your registered rights. Marketplaces are now much more aligned with a need to ensure fairness and protect the rights of registered trade mark owners.

 

Social media enforcement

Your rights may also be infringed online through their use in social media. Here, swift action is even more important as people can take and use your registered mark in an almost unchecked manner. It is also difficult to control the use of your trade marks on social media, but there is also an inherent opportunity to increase your brand’s value with its use.

 

There is a delicate balance with enforcement work when it comes to social media - brands need to be seen not to be over-reaching or over-demanding in what they ask of people in respect of using their brand’s name. Consumers feel as though they should be able to use a trade mark freely in context of conversation, feedback or reviews, whether positive or negative and brands can increase their value by engaging with platform users and being sure to respond to feedback.

 

Social media platforms have IP-based policies and do take steps to prioritise damaging takedowns, many of which are automated and something we work with on a daily basis. The important element of enforcement action for brand protection with regard to social media is taking action to prevent an issue from growing. If a negatively associated use of a registered mark gathers speed and traction on social media, the reputational damage to the owner’s brand can be substantial. At Keltie, we provide additional services to our clients to ensure damage is limited whilst still maintaining a strong public-facing perception of your brand.



Online brand protection - the Keltie difference

We use our skills and knowledge of trade mark law to investigate the policies of websites, commerce and social media platforms in order to identify the intellectual property safeguards they have put in place to protect the rights of trade mark owners. This often means that we can initiate takedowns quickly, before any reputational damage for our clients occurs, because we use the wording of their own policies to highlight instances of infringement contrary to the agreements they have in place.

 

By involving a trade mark attorney from Keltie at the outset of your innovation or project, we can apply our years of experience in searching and filing trade marks to benefit your business in two ways. First, our extensive search work will mean that your trade mark has the necessary freedoms to operate which you require, meaning there is unlikely to be any reason for another party to claim their rights are infringed by your mark. Secondly, the information we amass as part of our detailed search work means we build a significant evidence base, rooted in case law which we can call upon in the event of a dispute. This means we can act quickly and effectively if required, to protect the best interests of your brand.

 

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