A trademark can be almost anything that indicates a source or distinguishes a person’s goods or services. It can include words, symbols, graphics and even sound! Companies spend millions developing their trademark or “Brand.” The issue arises when defending or enforcing trademark rights, for example, from a passing off actions and trademark infringement claims under the Trade-marks Act (see background is for a refresher on passing off). The concern I have here arises when technological advancements, increased collaboration, and social media usage by employees compromises the integrity of corporate trademarks.
What becomes relevant here is the Doctrine of Dilution, where the ability of a famous trademark to distinguish its goods or services is somehow lessened by confusion or deception with another brand. The ability of corporations to defend famous marks through this doctrine was rejected by the Supreme Court of Canada, but it remains as serious concern for corporations trying to defend their trademarks and goodwill associated with their products (see Mattel, Inc. v. 3894207 Canada Inc. (2006) and Veuve Clicquot Ponsardin Maison Fondée en 1722 v. Boutiques Cliquot Ltée. (2006)).
The strength of a trademark entirely depends on the vigilance of corporations and entities in defending their marks and the uniqueness of the mark itself. A passing off infringement must be proven by the plaintiff (corporation) considering the 1) existence of goodwill in the mark; 2) deception to the public due to misrepresentation/confusion with the defendant’s mark; 3) actual or potential damages to the plaintiff (see Ciba-Geigy Canada Ltd. v. Apotex inc. (1992)). However, the possibility of confusion or dilution of a trademark has the potential of being greatly exacerbated through unauthorized usage of the mark. This is where employees and their gadgets come in.
With a click of a mouse, or a single tweet, an angry or careless employee can reproduce and dilute the effectiveness of their corporation’s mark. In the hustle and bustle of social media, increased and unfiltered sharing of opinions is inevitable. When an employee indicates their place of employment or other details to an online friend (often openly visible through social media – such as Twitter, or LinkedIn), the risk of damage to a corporation’s reputation through the employee’s association is significantly heightened. This can create serious PR concerns for companies… but it also affects the strength of their trademark. Continued “unauthorized” usage of the mark on the internet can easily snowball out of control, costing millions in PR, brand maintenance… or even worse, loss of the mark entirely – to the point where the mark no longer indicates a single source (ex. Kleenex – no longer a registered trademark).
There must be something that can be done to stop the endless unauthorized usage of trademarks today. There are many questions yet to be answers; who should police it? Should the social media outlets take the initiative to police postings of brand names? What about competing interests of “free speech” and the ability of users to simply make new user accounts to avoid sanctions (acting behind the veil of the internet)?
“Balancing the Scales” – My Thoughts:
I would suggest that corporations be proactive and take the initiative to educate their employees of unauthorized usage of trademarks and its penalties (perhaps at the point of hiring). This would allow corporations to hold their employees accountable and possibly reduce unauthorized usage of the mark. Despite the added cost to the corporations for running such educational programs, the long term reduction in trademark infringement claims may well be worth the immediate investment. Although this may not deter the “angry employee” who was terminated from a company from blogging or posting about the company (which raises other concerns altogether), it is in my opinion the best start to addressing an ever-growing issue.
Sources:
In addition to cases cited above, the inspiration for this blog posting was a Continuing Professional Development (CPD) Webinar by Avner Levin and Howard Simkevitz Re: Employee Use of Technology in the Workplace – The Legal Landscape.
Note: This is not meant to be an exhaustive explanation, and readers are assumed to have a basic knowledge of the law being discussed. Visit my website for some background information regarding passing off should you be curious to learning more.
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