Earlier this week several news channels picked up on the story about Nokia threatening a relatively new UK technology ‘start up’ over the use of the term ‘HERE’. Some channels, such as the BBC, looked at the ‘David Vs Goliath’ perspective and asked whether this was another example of a multinational using its size and far deeper resources to own a specific term and bully a small business. Whether Nokia’s claims have foundation is, I’m sure, a question that will be debated by a number of IP lawyers over the coming weeks, but it highlighted a scenario that we’re seeing with ever increasing frequency, with brands (from start ups to multi nationals) being launched into the digital marketplace with little awareness of how protected and defendable their newly created brand actually is, leaving themselves exposed to either infringement, duplication or confusion.
Before the days of the Internet, registering a brand and protecting it was relatively simple. Brand infringements were invariably something tangible so fell clearly under a specific legal jurisdiction so many brands could suffice with a single Trademark covering their country of operation and, with legal grounds being comparatively clear and the volume of instances being relatively small, a companys’ IP protection policy tended to be one of zero tolerance. A brand holder had the available resource to manage the volume of cases and the limited variety of infringements made things vastly easier to defend.
The digital world has changed that situation fundamentally.
- The ease by which a product or service can be supplied to a customer base has changed dramatically through the internet and, as result as exponentially increased the number of potential infringements and ways of infringing on a brand
- This, along with market globalisation has seen huge increases in SMEs worldwide and a stark increase in the volume of products and services being brought to market, which has caused a related growth in the volume of registered brands so the potential for a conflicting brand to exist, especially when it comes to a generic or dictionary term has increased
- Physical location is no longer a restriction on supply, so infringements can come from any location not just a brands country of operation
- Jurisdiction becomes less and less clear as situations involve legislation across multiple countries
- Especially with generic term names, brands must understand that not every instance they perceive as an infringement actually is
Add to this the fact that in a noisy marketplace it becomes ever more important for a brand to be able to ‘stand out’ and hold a unique identity, it becomes all the more surprising that more focus is not given to digital IP protection and ensuring, as much as possible, that the brand being launched is defendable.
As with most subjects relating to digital presence, there is no one size fits all answer to this question and we can be sure that those that want to infringe upon and take advantage of a brands investment for their own gain, will continue to do so and they will continue to find ever more ‘creative’ ways of doing so. There are however so basic steps that should always be taken before a brand is decided upon, let alone launched.
- Undertake an international search of registered trademarks for identical and similar terms
- Do any availability search across all the relevant Top Level and Country Code domain names
- Check the availability of social media handles, if social media is a requirement
- Once a name has been decided upon, secure the required domain names and register social media handles. Be mindful the more generic the term, the greater the likelihood you’ll have the acquire the domain names
- Ensure Trademarks are registered across the relevant jurisdictions the brand is due to be launched in. Be especially mindful if launching a brand in a region that uses non latin language i.e. China
- Register with the Trademark Clearinghouse (TMCH) and maximise its use
- Once launched, monitor digital channels and ensure you are clear on what scenarios would constitute and infringement
Ultimately, it can be very tempting to grasp the opportunity digital channels offer and get to market as quickly as possible. Taking that bit of additional time to do the necessary homework and preparation will help ensure that time and resource is spent dealing with legitimate instances of brand infringement and not on the raft of costly and avoidable issues that all too many companies are currently having to deal with.
So, coming back to the subject of ‘HERE’. Comments as to the outcome and the situation and/or the way it is handled I’ll leave to those directly involved in the case, (and there is evidently a wider discussion to be had about the use of a dictionary term being used as a Trademark in a generic rather than an arbitrary context), so I’ll end with a question. If you were part of the team at Lowdownapp deciding what to call the ‘check in’ button for your location based app, knowing that a mapping and location technology called ‘Here’ already existed with 22 registered Trademarks covering the term, 9 further Trademarks pending, were the registrant of the .com domain, numerous Country Code domains, the twitter handle and the facebook ID, would you have termed the button ‘Here’??