Protecting against digital trademark infringement

In Insights

31 March, 2020

Over the past few years, digitalisation has brought immense business opportunities with new commerce concepts and marketing possibilities constantly appearing.

Digital development also creates vulnerability and increases threats to businesses. If companies fail to protect themselves, they risk brand dilution and losing market competitiveness.

In a recent survey from trademark research and protection organisation CompuMark, 85% of brands experienced online trademark infringement during 2019. The most common types of trademark infringement were:

  • Domain name infringements (44%)
  • Social media (38%)
  • Online marketplaces (38%)
  • Advertising campaigns (34%)

While domain squatting (registering domains with another company’s trademark for financial gain) is nothing new, there can also be ulterior motives. These include using the domains for fraudulent purposes, like spreading fake news, email fraud or phishing (capturing sensitive personal information).

When a website’s content is obviously damaging to a company, a direct take-down by the registrar or webhost is a possibility. However, domain hijackers often operate in a grey zone where their actions are legally dubious without being indisputably illegal.

This can make it challenging for trademark holders to pursue a legal resolution. For legal action to be successful, there are many requisites that must be fulfilled. Domain pirates are often well-versed in these requisites and use them to their advantage.

Bad actors are constantly monitoring trademark registers, seeking to acquire .com domain as soon as applications are published. These hijackers will then sell the domain to the trademark holder at a price considerably higher than the actual cost of ownership. However, that price is typically lower than the cost of pursuing the matter through dispute resolution under the Uniform Domain-Name Dispute-Resolution Policy (UDRP).

Infringements on social media can involve everything from hijacking usernames to using hashtags of well-known brands to attract traffic. It is worth noting that sites like Instagram and Facebook have their own internal processes for dealing with these infringements that are often fairly effective.

Advertising infringements include situations where someone will post an ad on Google, using a trademark illegitimately in the ad text to attract attention. Google has its own procedure for dealing with this and also offers the possibility of locking trademarks, so they can only be used by approved parties.

Protecting your business from digital trademark infringement is essential in today’s constantly evolving marketplace. Below are a few recommended actions:

  1. Everything begins with making sure that you have the right rights. It is vital that your trademarks cover the things you need – geographical regions and product classes for instance. Included in this should be your digital trademarks (domain names).
  2. Create a policy for long-term, secure management of your digital assets. Make sure you establish what you need to protect, where and how you will protect it and how the policy will be maintained (and updated) over time.
  3. Internal training is important. If you train your staff properly, you can make use of their online reach to quickly pick up on any infringements and take effective action if they notice something suspicious.
  4. Establish an infringement strategy that dictates when and how actions should be taken. For instance, in what circumstances do you proceed with a take-down rather than a dispute resolution?
  5. Watch out! Being alert is an investment that often pays off. It is not possible to protect yourself against everything, so targeted monitoring can be a powerful tool for early detection and action. Monitor things such as trademark registers, domain registers, online marketplaces and social media to get control over the context in which your brands and trademarks are used.

Above all, remember that this is a continuous process that requires constant attention.

AWA and Dotkeeper are experts in comprehensive trademark protection, both online and offline. We know how to help you stay safe and protect your trademarks and domain names. Our knowledge and competencies are global, with offices throughout Europe and Asia.

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