Use Of Third Party Brands: Dos And Don'ts In Social Media And Advertising

• Published date: 25 May 2020
• Author: Ms Kate Swaine, Dan Smith, Kate Hawkins and Zoe Pearman
• Law Firm: Gowling WLG

Social media marketing is a powerful resource for brands, but the line between what is private and personal and what is commercial is becoming increasingly blurred. This article gives an overview of the rights under registered trademark law, passing off and advertising regulations that brand owners can enforce if a third party is using their brand without permission in advertising, and also outlines some advice for third parties looking to feature brands in their own communications.

Advertising relies on a number of key elements. Brand or product names, logos, slogans, distinctive packaging and get up, domain names and other signs frequently appear in marketing collateral. An issue arises when that content is being used without permission as such use could give rise to liability under trademark law or passing off. It could also fall foul of advertising regulations.

It is, therefore, crucially important for brand owners to be aware of the legal landscape and to understand how they can enforce their rights or reduce their risk if they wish to use a third party's brand in their advertising.

Introduction

The rise of Instagram and other social media (and influencers on those platforms) has contributed to the blurring between what is private and personal and what is commercial.

It can be especially challenging to differentiate when an individual posts both personal and commercial content to the same social media account. This issue was highlighted last summer when designer Philip Plein posted a cease and desist letter he had received from Ferrari's lawyers to his Instagram account. The letter was in response to a post Mr Plein had published, which featured his brand's trainers on the hood of his personal Ferrari. Ferrari complained that Mr Plein was using its brand for promotional purposes and the post was damaging to its reputation.

Given the current circumstances, where more and more content is being created at home and engagement is increasing, it may be that we see further examples of brand conflict in action.

What legal rights might be relevant for a brand owner?

Trademarks

• DO check whether you have a registered trademark. If so, you have an exclusive right to prevent third parties using
  1. a mark that is identical with your trademark in relation to identical goods and services; and
  2. a mark that is identical or similar with your trademark in relation to identical or similar goods and services where there is a likelihood of confusion.
• DO NOT forget that if your trademark has a reputation, you can prevent third parties from using a mark that is identical or similar to your mark for any goods and services, where such use of the mark takes unfair advantage of, or is detrimental to, the distinctive character or the repute of your trademark.

Some practical points to consider:

• DO consider whether the third party is "using" the mark - under the Trade Marks Act 1994, use of your mark in advertising constitutes "use" For traditional adverts this is clear, but if your issue is with a post on social media you may need to consider whether it is an advert and would constitute use, or whether it is a personal (i.e non-commercial) post.
• DO consider if there is a likelihood of confusion - some things to think about include
  • How similar are the goods/services is there a link?
  • Is there a likelihood that the average consumer would be confused into thinking there is a link between the infringing party and your brand?
  • How long has the other side been using the mark? Where two parties have co-existed for a long period, honestly using the same or closely similar names, the inevitable confusion may have to be tolerated.
• If you are a well-known brand DO consider whether the mark is known by a significant...