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Tim Newsome

Managing Director & Head of Dispute Resolution

01782 525011 tim.newsome@myerssolicitors.co.uk

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Making a mark – How Trademarks work

14th February 2024

Making a mark – How Trademarks work

Tim Newsome, Managing Director and Head of Litigation at Myers & Co, spoke to The Law Society earlier this month as he gave a brief overview of how trademarks work and how they can apply to various features of the web.

He explained: “With the seemingly relentless growth of the internet and social media, protecting your firm’s online reputation is more important than ever. The digital world offers numerous benefits for solicitors, but also presents various challenges – from adverse reviews by disgruntled clients to impersonation by fraudsters. A trademark can be a useful addition to help protect your brand in this complex and uncertain landscape.”

So what is a Trademark?

A trademark distinguishes a business from others in the marketplace and helps create a unique brand that builds recognition and trust. It can be a business name, logo, or slogan. By registering something as a trademark – via an application to the Intellectual Property Office – you can secure exclusive rights to use your chosen mark in connection with a particular service.

However, not all marks can be protected. To be eligible for registration, the mark must meet specific criteria, such as being distinctive, non-descriptive and different from any existing trademarks used for similar services. Once registered, the mark is then entered into a searchable register.

While a mark can be anything capable of being recorded in the register (including sounds and moving images), for a law firm a trademark will most probably be a word mark, such as the name or slogan, or a figurative mark, such as an image (with or without words).

Word marks are the most useful in a digital context, as people posting online will generally be typing in the name of the firm rather than reproducing its logo, so it is predominantly the use of the firm’s name that you are likely to object to. Most features, such as domain names and hashtags, are also text-based. so, a law firm should aim to have a brand name that is capable of being protected by a word mark, where possible, and that name should be as distinctive as possible.

The advantages of having a Trademark

Should another business use your unregistered mark, then you may have an action for infringement in the tort of passing off. However, a registered trademark offers more protection than a passing-off action. Some advantages of a registered trademark are:

Presumption of ownership

With a registered trademark, there is a presumption of ownership and validity. This means that you do not need to prove ownership or establish goodwill and reputation in the mark (as is required in an action for passing off). The burden of proof is thus significantly reduced, making it easier to enforce your rights.

National protection

A registered trademark offers protection nationally, whereas passing off only applies in the area where your business has built up sufficient goodwill.

Deterrence

A registered trademark serves as a deterrent to potential infringers, as it is visible in public trademark databases.

How much does a trademark cost?

The fee for registering a trademark is currently £170 for an online application in one class – meaning the type of goods and services you want to use your trademark for (class 45 is for legal services). Even if you decide to take some legal advice on the form of the application, it is a relatively low-cost procedure when considering the value of your brand and the benefits a trademark affords.

Trademark infringement

Trademark law prohibits anyone other than the registered owner of a trademark from using, in the course of their trade:

How a trademark can be useful online

A trademark can come in handy in many aspects of the digital domain. Considering these elements, and how the firm’s name may be used online, will help you decide on how best to protect the brand.

Content

Content is the text forming the body of the website or social media post. The use of a trademark by someone else will not infringe upon your rights if the mark is used in a descriptive manner, or for genuine criticism by a consumer, or for a use that cannot be said to be ‘in the course of trade’. Where there is trademark infringement on a website, the operator will be liable.

Social media platforms generally have policies and procedures to address trademark infringement. You can report harmful posts that violate your trademark rights, and having a registered trademark can result in the content being removed more quickly.

Domain names

The unregulated nature of the internet and the low barrier for entry means that anyone able to make electronic payments can register a domain name on a first-come, first-served basis. ‘Cyber squatters’ make money by registering domain names that are identical, or very similar to, a well-known company’s brand.

They will then try to sell the domain name to the true brand owner for a profit. Alternatively, they will use the domain name to set up a fraudulent website, with the aim of obtaining personal details from unsuspecting consumers.

To combat this, it is possible for a trademark owner to have a domain name transferred to them if that name includes the trademark in it. The Internet Corporation for Assigned Names and Numbers, which is the body responsible for allocating domain names, has a Uniform Dispute Resolution Policy that requires the transfer of a domain name where it is confusingly similar to a trademark and is being used in bad faith.

Social media account names

Like domain names, social media usernames are unique. And because a username appears in the link (that is, the URL) for the relevant account/page, then you will not be able to use your business name as your username if a third party is already doing so. Although it is possible to get this transferred, social media platforms usually require evidence that the trademarked username or account name is being used commercially and that there has been an infringement of your trademark rights before transferring it. So, the best form of protection is to register the appropriate social media profiles as soon as possible.

Metatags

A metatag is a keyword or other text that is embedded in the hypertext mark-up language (the HTML) of a webpage. The function of a metatag is to describe the contents of a website, using words that internet users are likely to search for. The use of trademarked metatags by others is, for the most part, lawful. This is because metatags are not visible to the consumer, so there is no likelihood of confusion.

Advertising and sponsored links

Keywords can be bought by advertisers from search engines so that, when searched for, those words will bring up adverts for the advertiser’s business. There is a low chance of infringement for this as internet users are aware that all sorts of banner advertisements appear in the results of searches.

However if the sponsored link and the accompanying text suggest that there was an economic link between the advertiser and the proprietor of the trade mark, or was so vague as to the origin of the goods or services that it was not possible for a normally informed and reasonably attentive internet user to determine whether or not there was such a link, then it may be an infringement.

Hashtags

A hashtag is a metadata tag that is prefaced by the hash symbol and they are frequently used on social media platforms. By placing a hashtag followed by a word or phrase, it turns into a hyperlink directing consumers to other related posts on the platform. There are some similarities between hashtags and keyword metatags. They both involve the use of keywords in a way designed to boost search visibility. However, metatags are unseen by consumers, whilst hashtags are visible. Consequently, hashtags may be treated differently from metatags with respect to trademark infringement. Consumer use of a trademark as a hashtag is unlikely to be actionable. In a business context, use of a trademark as a hashtag could well form the basis of an action for infringement.

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