PROTECTING YOUR NAME AND BRAND FROM ABUSE

PROTECTING YOUR NAME AND BRAND FROM ABUSE

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There are a number of reasons why a school or other organisation should consider

registering one or more trade marks, whether it be to protect its name, logo or domain

name. Let’s start with the main one: Twitter abuse.

Twitter Abuse and Impersonation of an Official Twitter Account

Most organisations today will find themselves at some point subject to one or more

forms of twitter abuse, which usually involves either a member of staff or pupil (in the

case of a school) writing defamatory remarks about the organisation or its key

personnel. What is becoming more prevalent is the misrepresentation by such a person

that the twitter account they have opened is the official twitter account of the

organisation. Getting such accounts taken down or transferred to the organisation can be

more difficult than imagined.

This is because Twitter requires the person or entity claiming it should own the official

twitter account to provide evidence (a) as to its legitimacy and (b) why the usage

amount to abuse, eg. impersonation. Even if the organisation can answer these

questions, twitter can often refuse to take down the account or transfer it to the

organisation, relying on reasons such as the right to free speech (twitter is based in

California and therefore is subject to its laws) or parody (the right imitate with deliberate

exaggeration for comic effect). Often such conclusions are not based on a clear

examination of the facts. What is more, even if the account is suspended eventually (and

this can take several attempts, often with the need to involve lawyers), the perpetrator

can then open an account with a similar name and start the whole (tedious) process all

over again, with no guarantee of success.

What should make Twitter stand up and listen, irrespective of the details behind the

tweets (which, as stated above, is often ignored) is ownership of a registered trade mark

which protects the name of the educational establishment and therefore the name of the

Twitter account (if the same). For instance, if your school is called the Learning Trust

and someone registers a fake twitter account using the name @learningtrust, such usage

PROTECTING YOUR NAME AND BRAND FROM ABUSE

will amount to an infringement of the trade mark Learning Trust if it has been registered

by the party concerned.

If you try to stop abuse (including impersonation) on Twitter, you will be asked to fill out

a form on which one of the first questions will be, “do you have an active, federally or

internationally registered trademark”. If your organisation is the owner of such a mark,

not only will it be able to take action for trade mark infringement, it will also be able to

convince Twitter much more easily to take down the account, as Twitter knows that a

trade mark infringement is an illegal act in most territories and therefore is obliged

under its own Terms of Service to take action. See here for further information from

Twitter itself, which states (amongst other things) “When there is a clear intent to

mislead others through the unauthorized use of a trademark, Twitter will suspend the

account and notify the account holder.” There should be no shimmying around as to

whether it amounts to abuse or impersonation or not, Twitter will just suspend the

account.

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Trade Marks

One of the most important intellectual property concerns for your organisation will be

whether or not to register a trademark for the organisation’s brand. The advantages of

doing so include:

1. preventing others from registering the same or a similar name after you;

2. national protection for your brand name and logo (including against social media

abuse)

3. the right to stop others from registering domain names using your brand name

PROTECTING YOUR NAME AND BRAND FROM ABUSE

4. a summary process for stopping others using your name or logo through the

courts with minimal expense.

The corollary of failing to register one or more trade marks for your brand is as follows:-

1. another registering a similar or identical word mark or logo to yours, thereby

blocking you from doing so, unless you can successfully object to their

registration, which can be time consuming, costly and with no guarantee of

success

2. only regional protection for your brand name and logo if someone tries to rip it off

3. no easy or quick way of stopping a cybersquatter from registering one or more

domain names using your brand name

4. no summary process for stopping people using your brand and any legal action

costly to bring and rarely successful

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The registration process takes between four to six months, assuming straightforward

and can be of either a logo and/or a word mark (where you are seeking to protect a

particular word or expression). In addition to the legal fees payable for registering a

trade mark, the official fees of the Intellectual Property Office are currently £200 for one

trade mark and £50 for each trade mark class over one in which you wish to register

your mark.

There are certain rules which govern whether or not a trade mark is registrable and it is

always advisable to check these carefully before embarking on registration. Also, as with

company names, if you try to register a similar or identical trade mark to that of

PROTECTING YOUR NAME AND BRAND FROM ABUSE

another, you may face opposition during the registration process or an objection at a

later point in time. Often these can be overcome, but it is always best to carry out

thorough checks before embarking on registration of a trade mark, as the fees are not

refundable once the process begins.

Passing Off

If your organisation uses a trading name which is the same or similar to another and

neither party has registered it as a trade mark, the other party could still raise an

objection on the grounds of passing off on the basis that your organisation is seeking to

pass itself off as the other. For this to happen, both parties would need to have been

trading in the same geographical region of the UK and sector as the other (eg.

education), but note that the overlapping area of dispute could be something else, such

as school uniforms to which your brand or crest is applied. So if one entity sells toilet

rolls and the other is a school in the same county, there is likely to be grave difficulty

proving confusion. Likewise, if one entity is in Aberdeen and the other St. Ives (but the

internet can change all of that now).

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Usually use has to be of a trading name, rather than a registered company name, since

if the registered company name is not used to trade, there can be no confusion and

therefore no grounds in passing off. So one way round registering a company name at

Companies House which you intend to use as a trading name and for which there is

already a mark with that name being used to trade is to adopt a different trading name.

For instance, Good School Trust Limited trading as The Pursuit of Excellence

Trust. Always make sure you carry out the necessary checks before choosing a trading

name, so as to avoid problems in the future.

Domain Names

It is also important to consider your domain name strategy when choosing domain

names in the context of trade marks. If you do not have a registered trademark covering

PROTECTING YOUR NAME AND BRAND FROM ABUSE

your domain name, it will be more difficult to stop a cybersquatter (i.e. a person seeking

to acquire a domain name in order to sell it to you at a high price) acquiring that domain

name. You will also not be able to make use of the recently established Trademark

Clearinghouse, which allows a trade mark owner within a specified period of time to

prevent wrongful registration of a domain name containing its brand. For further

information about this, please see our article on the Trademark Clearinghouse.

If you want to be sure that no-one else

will use your name or brand in the

future, you should consider registering a

trademark. For more information on

how we can help, including details of our

fixed fees for registering a trade mark

and discounts for registering a second

related logo or word mark, please

contact Brian Miller (020 7324 1523 /

BrianMiller@stoneking.co.uk). Some rights reserved by briggz5d

This article reflects the current law and practice. It is general in nature, and does not

purport in any way to be comprehensive or a substitute for specialist legal advice in

individual circumstances.

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