Violation of Trademark through Social Media
Under Section 3 ( 1 ) of the Trade Marks Act 1976, a hallmark is defined as a grade which is used or proposed to be used by a individual who is possessing the right either as owner or as registered user to utilize the grade in relation to merchandises or services so that the consumers can cognize about the connexion between the merchandises or services and the said individual in the class of trade. Therefore, it can be said that the elements of a hallmark is that it is a grade and it is used in relation to merchandises or services in order to distinguish the merchandises or services of a trade from its rivals. [ 1 ] Besides, harmonizing to the definition of the word “mark” provided under Section 3 ( 1 ) of the Trade Marks Act 1976, a hallmark can be words, trade names, names, labels, headers, devices, signatures, Numberss, letters or any combination thereof which is intended to be used to stand for the individuality of a trade. A hallmark can besides include portrayal of a individual, sound, symbols, phrase and any designs. [ 2 ]
A registered owner of a hallmark is given an sole right to utilize the hallmark in relation to his or her goods and services, he can besides delegate, licence or franchise it to a 3rd party. [ 3 ] Basically, if a individual uses the hallmark owned by the registered owner without any mandate or consent given by the owner, such individual is considered to hold infringed upon the proprietor’s hallmark. [ 4 ] The violation of registered hallmark occurs when there is an unauthorized usage of the registered hallmark or a grade which is extremely similar to it in an advertisement handbill and besides in relation to the merchandises or services by any individual other than the registered owner such that it will import a mention to the registered owner and consequence in misrepresentation every bit good as confusion among the populace. [ 5 ] Thus, in order to set up a feasible case against a hallmark violation instance, a complainant has to turn out that the hallmark under his ownership is entitled to protection which means that it has to be a registered hallmark and that the defendant’s usage of that hallmark is likely to lead on the consumers and do them to confound it with the plaintiff’s hallmark. [ 6 ]
In this epoch of engineering, bargainers are able to publicize their merchandises and services on popular hunt engines and other informational sites, or they can make their ain corporate web site to advance their merchandises every bit good as to supply all the of import information sing their merchandises. Since hallmark is playing a critical function in advertisement, hallmark violation had accordingly shifted to the on-line universe. [ 7 ] In recent old ages, due to the enormous growing of societal media, societal networking sites which is deemed as a antic manner to prosecute with consumers, have provided a platform where bargainers can hold far making and budget-friendly mechanisms to advance their merchandises or services. However, such great advantage comes with great hazards as along with the increasing usage of hallmark in societal media, the jobs of violation of hallmark through societal media have attracted considerable attending.
However, the Trade Marks Act 1976 and Trade Marks Regulations 1997 which govern hallmark protection in Malaysia are soundless on the issue of hallmark violation through societal media. Unlike Malaysia, hallmark protection on societal media sites in the United States falls within the horizon of the Lanham Act. The Lanham Act is the primary federal hallmark legislative act of jurisprudence in the United States which prohibits a figure of activities such as false advertisement, hallmark violation and hallmark dilution. Section 1125 ( a ) ( 1 ) of the Lanham Act imposes civil liability on a individual who uses any grade in relation to any merchandises or services in the class of trade which will take to confusion among the consumers. The proviso under Section 1114 is similar to Section 1125 ( a ) ( 1 ) but it is merely applicable to Markss registered with the United States Patent and Trademark Office ( PTO ) . In order to successfully claim under either Section 1125 ( a ) ( 1 ) or Section 1114, a complainant is required to demo that the allegedly infringed grade is used in commercialism, the complainant has the rights against that grade which such rights were established prior to any rights of the suspect the alleged violation has caused confusion. [ 8 ]
In the instance ofTiffany ( NJ ) Inc. v eBay Inc.[ 9 ] which occurred in the United States, Tiffany sued eBay, an on-line market place for hallmark violation, claiming that eBay had allowed and facilitated the merchandising of forgery Tiffany merchandises on its web site. There is grounds bespeaking that eBay had removed instantly the Sellerss of forgery merchandises from the listings on its site when it received notice from Tiffany. Tiffany argued that eBay should be held apt for the forgery merchandises and it is the duty of eBay to patrol the listings on its ain. The tribunal nevertheless held that Tiffany as the hallmark proprietor, was responsible to patrol its ain trade name and eBay must hold direct control over the agencies of violation in order for it to be charged with trademark violation as the liability had to be premised on specific cognition. Since eBay is a site which enables on-line minutess between those buyers and Sellerss who are besides members of eBay. It does non take physical ownership of the merchandises sold by the Sellerss on its web site and it is the Sellerss who sell the merchandises instead than eBay who simply provides service for the Sellerss without seeing or inspecting the merchandises. Therefore, eBay could be deemed as non holding specific cognition and control over the agencies of violation. This instance was decided in favor of eBay whereby it did non conflict the hallmark of Tiffany.
Other than legal options, instances sing hallmark violation on societal networking sites can besides be settled via mechanisms provided by the operators of the societal networking web sites and most of the societal media sites have specific ailment processs which enable the hallmark proprietors to describe to the web site operators so that to take or reassign those conflicting histories where their hallmarks have been used without their mandate. For case, inLaRussa V Chirrup, [ 10 ] Tony LaRussa, the baseball director of St. Louis Cardinals, sued an unknown party who making an history on Twitter utilizing his name as the username and doing bad remarks about the participants of his squad. He claimed for hallmark violation. However, the instance was resolved shortly after the ailment was filed to the operator of Twitter whereby Twitter had disabled the username and transferred the sphere name to LaRussa. Besides, inOneok, Inc. v Twitter, Inc, [ 11 ] an energy services company, Oneok, filed a ailment in the tribunal claiming that its registered hallmark had been infringed by an unknown user who registered as Oneok on Twitter and posted information about the company. However, the ailment filed in the tribunal was dismissed by Oneok the twenty-four hours after the violation was reported to Twitter and the username was later transferred to the company. Hence, it can be seen that by utilizing the mechanisms available on the societal media sites in deciding the instances of hallmark violation without conveying them to the tribunal, it will be more advantageous to the hallmark proprietors as it help to salvage cost and clip.
As a decision, a hallmark is really of import to every bargainer as it represents the individuality and repute of a certain concern, since the hallmark jurisprudence in Malaysia is still unequal to protect those trademark owners against violation particularly when it comes to societal media, possibly a new statute law refering to brand violation on societal media should be passed by the authorities in order to supply protection for those trademark owners who advertise their merchandises or services on societal media sites as societal media has become one of the of import selling tools for most of the concerns today. Alternatively, the Trade Marks Act 1976 and Trade Marks Regulations 1997 which govern hallmark protection in Malaysia can be amended so that their application could be extended to cover hallmark violation through societal media every bit good. From the Tiffany instance, it was stated that a hallmark owner has the responsibility to patrol his ain hallmark. Thus, companies should implement a proper monitoring system to observe whether their registered hallmarks are used by others without their consent or mandate. There are besides web sites such as KnowEM.com and Adgooroo.com which provide effectual tools for the companies in assisting them to look into the handiness of their hallmark on societal networking sites and to supply studies when there are people offering on keywords which tie into their hallmarks. [ 12 ] Other than that, in order to forestall hallmark violation on societal media, companies should be familiar with the societal media sites and their policies refering hallmark usage if they want to publicize their merchandises on those sites. They should besides take proactive stairss to protect their hallmarks by obtaining history names incorporating their hallmarks on those societal media sites before other people can obtain the history names. [ 13 ] Last but non least, other than conveying instances refering to brand violation to judicial proceeding which will be dearly-won and clip consuming, the companies can besides utilize the tools within the societal networking sites to resolutenesss such instances so that the infringing histories would be removed or disabled by the operators and this is deemed as an rather effectual manner in covering with the jobs of hallmark violation on societal networking sites.
List of mentions
- ‘What is a Trade Mark ( or Brand ) ? ’ ( Intellectual Property Office, 13 June 2011 ) & A ; lt ; hypertext transfer protocol: //www.ipo.gov.uk/types/tm/t-about/t-whatis.htm & A ; gt ; accessed 5 August 2014
- Ahmad Azizi bin Zulkefli and Sumah Ramachandran, ‘Trade Mark Protection in Malaysia – A Basic Guide’ ( Biotechcorp.com, 21 December 2009 ) & A ; lt ; hypertext transfer protocol: //www.biotechcorp.com.my/wp-content/uploads/2011/11/downloads_aboutmalaysia/IP_Booklet_Trade-Mark_V1.pdf & A ; gt ; accessed 5August 2014
- Trade Marks Act 1976, s 35
- ‘Is it Trademark Infringement? ’ ( Nolo.com ) & A ; lt ; hypertext transfer protocol: //www.nolo.com/legal-encyclopedia/is-it-trademark-infringement & A ; gt ; accessed 7August 2014
- Trade Marks Act 1976, s 38
- Aishath Muneeza, ‘The Milestone of Blogs and Bloggers in Malaysia’ [ 2010 ] 3 MLJ cvii
7. Yvonne Noorlander, ‘Calling a Halt to Trademark Infringement in Social Media – International Report’ ( Intellectual Assessment Management, 9 October 2013 ) & A ; lt ; hypertext transfer protocol: //www.iam-magazine.com/reports/Detail.aspx? g=dd57f6ce-e700-4a33-a04f-c77368c7ae03 & A ; gt ; accessed 7 August 2014
8. Nicholas Rodriguez, ‘Trademark and Copyright Issues Arising from Memetic Marketing on Social Media’ ( Acc.com ) & A ; lt ; hypertext transfer protocol: //www.acc.com/legalresources/quickcounsel/taciafmmosm.cfm & A ; gt ; accessed 7August 2014
- Tiffany ( NJ ) Inc. v eBay Inc. 600 F.3d 93 ( 2nd Cir. 2010 )
- Louis Vuitton Malletier v Akanoc Solutions Inc. 658 F.3d 936 ( 9th Cir. 2011 )
11. Darin M. Klemchuk and Roxana Sullivan, ‘Brand Enforcement on Social Networking Sites’ ( Americanbar.org, ) & A ; lt ; hypertext transfer protocol: //apps.americanbar.org/litigation/committees/commercial/articles/092410-klemchuk-sullivan-social-networking-brand-enforcement.html & A ; gt ; accessed 8 August 2014
- Jeanne L. Seewald, ‘Considerations When Using Trademarks in Social Media’ ( Hahnlaw.com ) & A ; lt ; hypertext transfer protocol: //www.hahnlaw.com/references/a4cf7ae5-f892-49e9-99d5-29e9b4f73f72.pdf & A ; gt ; accessed 10 August 2014