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Brand Protection Online
A Practical Guide to Protection from Online Infringement
By Jeremy Blum, Theo Savvides Globe Law and Business Ltd
Copyright © 2017 Globe Law and Business Ltd
All rights reserved.
ISBN: 978-1-78742-077-9
CHAPTER 1
How online businesses can get protection and what can be protected
Cam Gatta Emmy Hunt Redd Solicitors LLP Tara Knapp Microsoft Corporation
1. Online uses and technological means
Many factors determine the type of online activities a brand owner engages in and, consequently, how the brand owner will use its trade marks (and, where applicable, those of third parties) online. At their most basic, such factors include the nature of the brand owner's business, its business model, and its strategies in relation to marketing, advertising and public relations (PR). Similarly, third parties may use a brand owner's trade marks online, whether for commercial purposes or otherwise.
This section explores some of the ways in which trade marks are used online and certain technological means that are adopted by brand owners to establish their online presence and drive web traffic in their direction. Where possible, Microsoft provides a 'case study' for illustration and examples. This is by no means intended to be an exhaustive account of all possible uses, however, bearing in mind the constantly evolving nature of the online world.
1.1 Domain names and breadcrumbs
A domain name is invariably described as a form of online 'address' or 'phone number', and in essence it works as a unique identifier enabling web users to access a specific website.
For brand owners, a domain name represents an opportunity to have one or more evocative words to direct online traffic, whether existing or potential customers, to their websites.
As key brand identifiers, domain names often consist of or contain a brand owner's corporate mark, the name of one of its key offerings, or a distinctive slogan.
The examples below show Microsoft's use of its corporate brand and the name of one of its core offerings as the penultimate segment of a domain name string referred to as a 'second-level' domain:
The 'e-addresses' for individual web pages will often include additional elements following the domain name. These are referred to as the 'breadcrumb trail' and are a useful way for users to navigate websites, understand their structure and work out their location within it.
As shown in the example below, a brand owner may use its brand as part of the breadcrumb trail:
1.2 Website uses
Brands are used on websites for a wide range of purposes, including to describe and advertise a brand owner's business and goods and services, and to offer them for sale.
Conversely, some brand owners will use third party brands: for example, if they operate online marketplaces, such as Amazon® and eBay®, if they are retailers of third party brands (eg, Toys "R" Us®, Wal-Mart®), or if they are reviewing third party products and services (eg, price comparison websites).
1.3 Social media
Social media channels represent a significant marketing and PR opportunity for brand owners. It is usual for brand owners to be active on one or more social media channels, eg, Facebook®, Twitter®, YouTube®, LinkedIn®, Pinterest® and, depending on the brand owner's business and offerings, it may have a social media presence in relation to its corporate brand as well as its individual offerings.
By way of example, Microsoft has a corporate LinkedIn profile and one dedicated to Microsoft Surface, the personal computer device:
At the same time, social media represents a potential enforcement problem due to the proliferation of unauthorised uses of brand owners' trade marks, both as profile or channel names or as part of the content displayed on them. It is not uncommon for counterfeiters and fraudsters of various kinds to set up fake official profiles to prey on an unwitting public.
Where a brand owner's social media presence is well-established and publicised effectively, it can also help reduce the impact of online infringements, in that the public will be able to distinguish the official channels from the bogus ones.
1.4 Software applications (apps)
The widespread use and popularity of apps cannot be emphasised enough. Brand owners may develop them for a variety of reasons, including (among other things) as a self-standing offering, as an additional way to deliver an existing offering, or as a marketing or informational tool. In any event, apps are a tool to promote customer interaction and foster brand loyalty. As shown in the examples below taken from Microsoft's MicrosoftStore, apps may be marketed under a brand owner's core brand or under a new brand:
1.5 Meta tags
Meta tags are segments of text used in the code underlying a web page. They are not visible on the page itself but have an important role in the context of search engine optimisation, ie, the process whereby a search engine indexes the results of a web search using a complex mathematical algorithm.
In carrying out a search, a search engine will look for content that is relevant to the search term specified by the web user. A meta tag that matches the search criteria will contribute to the website achieving a higher ranking in the page results.
The algorithms used by search engines are complex and meta tags represent only one of the 'signals' looked for in the search. However, they do play a role and for this reason brand owners embed their own brands (in this case, word marks) as meta tags in the code underlying their web pages and may also consider embedding third party brands. The latter strategy is not without risks, however, as the use of a third party trade mark in a meta tag may constitute trade mark infringement.
The example below illustrates Microsoft's use of its brands as meta tags on its official Xbox website:
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1.6 Keyword advertising and remarketing
To promote and increase the visibility of their brands in the context of web searches, brand owners may also adopt a search engine marketing (SEM) tool known as 'keyword advertising' or 'pay-per-click advertising'. Examples of this are Bing Ads® and Google AdWords®.
Brand owners (ie, the advertisers) pay to display their advertisements in a prominent section of the search results page (usually next to or above the results) in response to search requests containing one or more keywords.
As well as using their own trade marks or generic terms as keywords, brand owners may also use third party trade marks. Use of the latter can, in certain circumstances, give rise to the infringement of the third party's mark(s) and the associated risks must be evaluated carefully. What constitutes permissible keyword advertising using a third party's trade mark(s) is fact dependent and must be assessed in accordance with the applicable laws in the relevant jurisdiction(s).
Examples of sponsored ads appearing on Microsoft's Bing search engine when searching for the phrase 'Microsoft Office' include the examples shown below:
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A related SEM tool is remarketing. This takes many forms and its aim is essentially to enable a brand owner to show its online advertisements to web users who visited its website but did not place an order or buy anything.
The brand owner –
• gathers information on web users visiting its website through the use of a meta tag;
• creates a remarketing list of past visitors;
• allocates the list to a specific group of advertisements that could be of interest to those visitors; and
• ensures that such advertisements are shown to the visitors the next time they are searching for specific keywords online.
In other words, it is a more targeted form of keyword advertising because the brand owner can determine and create its target audience(s) and the choice of keywords for those visitors is based on their past behaviour and preferences on the brand owner's website.
1.7 Linking and framing
A hyperlink or link is a common functionality on a website which enables a visitor to connect from one web page to another within the same website or to another website by, for example, clicking on it. The link may be expressed in the form of text or embedded in an image. When expressed in text form, hyperlinks are usually evidenced by the use of a different colour font, as shown in the example below:
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which redirects to the webpage:
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Links leading to another website can redirect to the homepage of the linked site or to a section of it, by-passing the homepage.
Framing is a technology that enables a web operator to display content from another website or other source on its web pages. The content from the independent source is viewed in a section (or frame) of the displaying website. An example of framing is Microsoft's video in relation to the Bing Ads® remarketing tool, which is published by Microsoft on YouTube® and, at the same time, 'framed' in the relevant section of Microsoft's official website:
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Linking and framing may raise issues when they contain or display a third party's trade mark and, for example, the use is in a context that could take advantage of or tarnish the reputation of the brand owner, or somehow create confusion as to the origin of the goods and services advertised on that website, or create an unwanted association between the operator of the website and the third party brand owner.
2. International issues that online brands face when protecting trade marks
2.1 Formulating a brand protection strategy
One might think that online brands present a unique environment in which to formulate a brand protection strategy. However, many of the factors to be considered are the same for both online and offline businesses. The emphasis placed on particular aspects of a brand protection strategy will vary, depending on the individual needs of the business in the online world, its broader commercial environment and the characteristics of the brands in question.
In formulating an appropriate brand protection strategy in the online world, it is helpful to consider the following questions, which are summarised graphically in the table and diagram on page 18. Again, equivalent considerations are likely to apply in the offline world.
(a) Relevance and resources
The reality of commerce today is that nearly all businesses are, to some extent, online: some business brands are purely online (eg, Twitter®) but the vast majority combine some form of bricks and mortar presence with an online presence, eg, for the purpose of marketing or retail sales.
When formulating a brand protection strategy (whether it is for the business as a whole or a specific project), fundamental initial considerations include:
• how important are online activities to the business as a whole? Or, how important is the individual online project to the business?
• how does the business generate revenue as a whole and how will the online project in question affect revenue generation?
These questions feed back into the overarching issues of:
• the resources that are available in terms of money, time and human resources and how much can be allocated to brand protection in relation to the business's overall online activities (or the individual project); and
• the PR implications, a factor bound to pervade the decision-making process as a whole.
(b) What type of brand is being protected? Brand prioritisation and tiering framework
Brands come in a variety of shapes and sizes and the type of brand in question will significantly affect the protection to be sought. Most businesses place their 'house' brands or their corporate brand at the 'top of the tree' and rely on the importance of these brands to justify diverting the greatest resources in favour of their protection and enforcement.
Significant businesses will also offer a range of key products or services, all individually branded and, again, sufficiently important to justify the resources needed to protect and enforce these individual brands.
Various types of sub-brand may then exist and require protection and enforcement, depending on a variety of reasons such as the extent of their use, timeframe, importance, revenue-generation and so on. These sub-brands might include the names of product features, or products with a limited shelf-life, advertising or promotional identifiers such as tag-lines or hashtags. Reflecting the easily adaptable nature of the online world, there is greater use of shortterm product titles and social media marketing that can give rise to a large number of sub-brands, some of which will justify inclusion in a brand protection and enforcement programme and some of which will not. Again, the type and importance of the brand is connected to the issue of resources and whether the brand in question justifies a significant investment in its protection.
It is advisable for a business to create a brand prioritisation matrix, so that both the legal team and the commercial team have in mind the business's branding priorities as a whole and have a tool to categorise new initiatives. By way of example, a simplified version of Microsoft's brand prioritisation matrix is shown below:
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A brand prioritisation matrix should be combined with a 'tiering framework', ie, a system for determining the level of effort the business should invest in a brand project. Factors contributing to the tiering framework include:
• the commercial importance of the brand under the prioritisation matrix;
• the impact of the brand and the overall project on the business;
• the resources available;
• the features of the brand; and
• the leadership involvement required throughout the process.
On the assumption that budgetary constraints are always a factor, a business will be able to apply a high level of effort only to a limited number of key projects and, conversely, a more modest investment of resources will be allocated to a larger number of less business crucial projects. The diagram below is an illustration of the 'tiering framework' and the factors influencing it:
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(c) Where is the brand important?
The protection of a brand must be done on a territorial basis. Only in the most exceptional cases can the cost and time needed for true worldwide protection be justified.
Formulating a brand protection strategy therefore requires careful consideration of where the brand will need to be protected. From a strategic point of view, most businesses start to protect their brand in a small number of important key territories, usually in countries where there is a business presence for the relevant brand (eg, where staff are located or where goods are manufactured or distributed) but, for online businesses, this might be extended to territories in which significant growth is foreseen by website user data or where there may be specific companion markets (eg, a software development company might seek to register app names in territories where there is a significant market for app development).
It is common practice for businesses to adopt a truly worldwide approach to filing for certain key brands, with resources directed to protecting and enforcing rights on a global basis. Microsoft's own key product brands are sufficiently important that the company uses the moniker 'scorched earth' to denote the filing strategy associated with them, which explains the importance given to the worldwide nature of such rights.
A worldwide strategy can be supplemented (or substituted) by a regional strategy, eg, by identifying that certain regions (North America, Europe, Pacific Rim) are of particular importance, or even a strategy for supplemental territories on a national basis, perhaps in view of likely business expansion or infringement risks. These present a second tier of territories of interest. Particularly where a brand has not yet been launched or is not successful in such regions or territories, a business can often adopt a more flexible approach to the registrability of its brand and the existence of third party rights that might block them.
Finally, it is worth considering whether there are any strategic territories that should be identified and considered within a protection or enforcement programme. By way of example, certain territories provide counterfeiters with access to important markets (eg, Turkey to the European Union) or have historically presented problems with domain name 'pirates' (such as China). Where such a threat might significantly impact the business, it may be worth including these territories well in advance of any movement into these markets, if only to ensure that the brand owner's position is preserved for the future.
(d) Brand protection strategy goals
One might want to protect a brand for any number of reasons but, bearing in mind all of the above, what is the objective of protecting the brand in question?
• Brand identification – some brand owners want to create a 'fortress' around their corporate or house marks. This type of strategy is resource intensive, but with a strategic approach and a consistent application of both the protection and enforcement aspects, a business can send a strong message to others that its brand is not to be encroached upon. This approach can be costly, but not only in terms of money and time: a heavy-handed approach to brand protection can also harm the relationship of a brand with the public.
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Excerpted from Brand Protection Online by Jeremy Blum, Theo Savvides. Copyright © 2017 Globe Law and Business Ltd. Excerpted by permission of Globe Law and Business Ltd.
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