Harvest success in a field of chaos: the digitalisation of trademarks

Nathalie Dreyfus of Dreyfus & Associates examines the journey that trademarks make once they leave the realm of the real

It knows no geographical bounds and lives in a limitless world of its own. It is a network of networks, connecting millions of private, public, business and government services together. It is never static and is constantly changing. With more than 2.4 billion visitors each day, it has managed to permeate human life in countless ways. The fertile yet chaotic grounds of the virtual world, that is the internet and the world wide web, reveal the hypermodern thresholds that individuals and businesses alike must meet to reap the fruit of one’s labour.

Akin to its nature, the internet has been a catalyst for exponential change and this is certainly evident to the extent that cyberspace has digitalised the way in which we create, store, retrieve and disseminate information. The full extent of the effects of the internet on intellectual property law, and more specifically on the law of trademarks, are still unknown, shedding light on the internet’s power to create and send cyber laws into a state of flux.

This can be attributed partly to the fact that, unlike for example, in property law, where the dimensions of a building and to whom it belongs to may be disputed, the internet is not a structure that can be measured. With no geographical jurisdiction, despite efforts to regulate its terrestrial extent based on national legal jurisdiction, the global statuses of cyber laws are inherently unregulated. As a solution, a digital transition is therefore required of business’ in order to grow, protect and defend their IP rights.

The use of trademarks is by no means a modern phenomenon. Excavated artifacts from ancient Egypt have been deemed to behold trademark symbols of both a religious and superstitious nature, while merchants’ marks, a symbol affixed to lumber onto a raft, were once commonly used in Japan as a means of identifying the owner of a certain good.

From a legal standpoint, the law began to carve out its own method for dealing with infringements against trademarks as early as in the time of the Romans, where the onus of proof was on the cheated buyer to take action and make a stand for his or her rights. Even with the increased use of trademarks in the Middle Ages, along with the ability brought on in the Industrial Revolution to replicate goods and services at a higher volume and speed, nothing has affected the face of trademarks to the effect that the internet has.

Today, trademarks face challenges brought on by the internet that, if not dealt with appropriately, may result in illegal activities, including infringements, which can be devastating to any brand. Trademark counterfeiting and free riding have also become frequent occurrences. Certainly, fake websites, cybersquatting with identical or similar domain names and phishing attacks, or even fake lotteries, are other internet threats affecting the success and viability of your trademark.

Nevertheless, despite various exploitative measures that trademarks may have to undergo, the right to defend trademarks in court against potential infringements is bestowed upon its owner. From the outset, the best defence in protecting trademarks is notoriety. Indeed, trademarks are generally best represented and protected when they are well known. Therefore adapting trademarks to the online world and building their online reputation is necessary, especially concerning the virtual landscape that individuals, businesses and consumers alike inhabit today. The digital trademark is the best way for companies to create and expand its online presence and thereby success.

What is a digital trademark?

A digital trademark is the equivalent of the traditional IP right, with a digital dimension, which is conveyed by an online identity and community.

The digitalisation process of a trademark is intrinsically linked to the digitalisation of the company. The purpose of this process is both internal and external for the company as it aims to provide productivity gains and profit from technological progress, as well as an increase of the number of clients and added value.

It is often said that trademarks are constituted by their DNA. Digital trademarks are built with the same DNA as traditional trademarks, providing business owners with an exact replica of their original mark. A digital trademark can either be created as such or ensue from a traditional trademark. The legal formalities surrounding digital trademarks are no different from those of traditional trademarks. They are subject to identical registration formalities in order to be granted protection. They are also awarded the same defences against infringements.

At first sight, it appears that digital trademarks do not have much more to offer compared to traditional trademarks. This raises the question, why should the digitalisation process be set up?

Why digitalise your trademark?

Digitalising your trademark is the best vehicle to get you closer to your customers and future customers. Digitalisation has, like the internet itself, a limitless effect on your business’ potential communications and transactions, including e-commerce and custom branding advertisements. With billions of people visiting the internet each day, it truly represents the real battlefield for business success.

Recent industry statistics prove the explosive pace at which industry develops, as worldwide business-to-business (B2B) e-commerce sales amounted to more than $1.2 trillion in 2013, and business-to-consumer e-commerce hit $1.5 trillion. The consequential success of online shopping can be awarded in part to its 24/7 accessibility, often lower prices and personalised customer advantages.

Trademarks, therefore, have to evolve and place themselves on a one-to-one relationship with each consumer. To begin with, many marketing initiatives have been developed thanks to data collection in client files to personalise every exchange with the client. Whether it is through frequent client programmes, email marketing or social networks, trademark owners have the ability to exploit the internet to their advantage by digitalising customer service. Facebook, for example, has acted as a social network platform that showcases company trademarks to customised and marketable audiences.

Moreover, through digital communication, a trademark can create a digital identity and universe for itself. In turn, this will enable the trademark to enhance its positive image, protect itself from online counterfeiting, and reduce the risk of trademark confusion. Trademark digitalisation can also be a vector of online reputation management. A relationship of trust ensues from good reputation, which explains why it is fundamental for a trademark to benefit from a good reputation.

Websites and their referencing are a part of the digitalisation process, too. The Internet Corporation for Assigned Names and Numbers’s (ICANN) new gTLDs programme is a great example of the speed with which the internet is developing. New gTLDs aim to promote competition and choice among domain names. They will affect website referencing as the programe allows brands to create or reinforce their own cyberspace with their .brand, as well as allowing them to promote their activities with gTLDs such as .club, .shop, .luxury.

Nevertheless, business should always take caution when using what the internet and social networks have to offer. One must always beware of a bad buzz or the Streisand effect, even though risks can go further than that.

If brands use social networks as customer service platforms, they have to be responsive and effective, otherwise their pages might become ranting areas where all complaints are filed but no satisfying answers are given. This will reflect negatively on the brand and company in general, so responsiveness is essential for both communication and defence. The faster the reaction against a trademark infringement, the less people will have had time to see it.

How do you protect a digital trademark?

Along with the infringements that traditional trademarks are predisposed to, digital trademarks can also be subject to online attacks, such as hacking, cybersquatting and typosquatting.

This is because, as it has been noted, the internet is a vast domain where it is difficult to create, enforce and maintain legal frameworks. Preventative measures established before the digitalisation, combined with protective measures for the duration of such processes, are the ideal ways in which to protect your property.

Difficulties that arise vis-à-vis the internet are embodied by The Pirate Bay trial, a case in which this famous website provided access to torrents, allowing the exchange of copyrighted material without authorisation. Complications arose as different national justice systems tried to take down the website, but in return, the website’s owners would simply relocate their servers to a country where the judge’s decision wasn’t applicable. The only efficient way of taking down such a website would have been to physically remove the servers.

For trademark issues, though mediation is always the most convenient solution, jurisdictional actions tend to act as a better deterrent and therefore they are preferred. Due to the borderless territory that is cyberspace, when facing jurisdictional issues, it is often hard to find the applicable law. We are then confronted with national law with extraterrestrial reach.
Clearly, trademark laws were not conceived with the digitalisation process in mind. While the internet is instantaneous, law can at times be lethargic.

Even emergency procedures in remedying trademark issues can take several days, a length of time that can be very damaging to one’s reputation.

Permanent vigilance and responsiveness, a token of the general surveillance and monitoring systems that Dreyfus has developed, can provide your company’s trademark with both preventative and protective support.

The platform enables Dreyfus lawyers to collect and sift through information related to counterfeiting or cybersquatting activities and then make the pertinent results available to IP rights owners.

As previously stated, creating an online community around the trademark is the best way to protect it and make sure clients find the official websites and social network pages. To be easily found, the best is to be well located, and new gTLDs are a new way of ensuring that.

Here are a few words of advice to manage your digital trademark:
  • Create guidelines to orient the use made of your digital trademark. These will enable you to centre your focus on specific methods and communicate in a homogeneous manner.

  • Control of the use made of the digital trademark to ensure a logical communication strategy.

  • Control of what is published under the trademark’s name as it can be grounds for liability.

  • Do not let the risks posed by the never-ending field that is the internet inhibit your trademark’s success. Instead, make the decision to digitalise your trademark, and rest assured that along with the protection offered by Dreyfus, your trademark will rise to the challenge.
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