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A Look Back Over The IP Exporter’s First Year

Photo courtesy of Abdallah Iskandarani.

Earlier this month, I received a message from WordPress notifying me of the one year anniversary of The IP Exporter. As blogging on cross-border and trade-related IP issues over the past year has had results that I never imagined, I thought I would take this opportunity to take a look back at some of my impressions over the past year.

The outpouring of support and feedback I have received from other legal practitioners and those with an interest in the ever-changing world of cross-border IP protection has been the most remarkable aspect of blogging for The IP Exporter. Attorneys and IP specialists from all over the world have not only read my blog (which is a shock in itself!) and shared it with friends and colleagues, but they actually commented on it and told me that it helped in their research and the actual legal issues they were facing. As a relatively young attorney, I have been heartened by this positive feedback. Also, such communication has led to a number of guest writing and professional legal opportunities that I would not have had without blogging.

Another amazing thing I have found about blogging for the The IP Exporter has been seeing which cross-border IP issues have struck accord with my readers. Each time I blog, I am unsure whether an issue I think is interesting is relevant or important to my readers. Some postings I have made on issues that I think are not earth shattering, such as whether to register a trademark in India under the Madrid Protocol or directly through India’s trademark office (The Controller General of Patents Designs and Trademarks), have been the most read postings I have written.

Lastly, the ability to connect with people throughout the world has made blogging an amazing experience. I never thought people from so many different countries would read The IP Exporter. To date, readers from over 90 countries have read The IP Exporter, and much of my readership comes from places I never expected, such as India, Malaysia and Russia. I am also continually amazed about what I blog or tweet about, much of which takes place in countries on the other side of the globe, have resulted in direct feedback from those in such countries. For instance, when I tweeted in July this year about a story on how a hair salon in Dubai, United Arab Emirates was using promotional materials that were alleged to be confusingly similar to Facebook’s protected branding, I received the above photo soon thereafter by a local resident who found it on his car. Although, it is not a complete surprise that I would receive such feedback in this globalized age, I still find it remarkable.

What’s The Takeaway? Blogging over the past year has been an amazing experience. It has made me grow as a writer and as a legal practitioner. More than personal and professional growth, it has made me realize how large a need there is for people to know more about cross-border and trade-related IP issues. The culmination of these experiences has energized me and my efforts to blog on these topics.

What cross-border or trade-related IP issues are you facing?

Dealing With (Foreign) Infringing Online Advertisements

Last week, I had the privilege of being a guest writer for Seattle-area based Efinitytech on an article dealing with infringing online advertisements. Although it was focused on combatting trademark infringing online advertising on U.S.-based search engines such as Google, Bing and Yahoo!, as well as U.S. social media sites such as Facebook and Twitter, it contained many of the same considerations trademark owners, and their agents, should consider when combatting infringing online advertisements abroad. However, there are a few additional foreign issues trademark rights holders should consider.

1. Obtain A Trademark Registration. U.S. businesses generally need a U.S. federal trademark registration to submit an advertising complaint to a U.S. online advertising website. A U.S. federal trademark registration establishes a presumption of ownership and exclusive rights in a trademark in the U.S. This gives U.S. search engines and social media sites assurances that a filed advertising complaint is valid.

Additional Foreign Considerations: A trademark registration is also generally required to submit ad complaints in other countries. Many countries do not even recognize a business’ rights in a trademark unless it has registered the mark with the country’s national trademark office. As a result, Google, Bing and Yahoo!, their foreign subsidiaries, as well as many other foreign advertising sites, require that a business have a valid trademark registration in the country where they are filing an online ad complaint. This means that if a rights holder wants to enforce their trademark rights against a foreign ad, they generally have to have a valid trademark registration in that foreign country.

2. Advertising Websites Have Different Trademark Enforcement Reputations. U.S. search engines and social media sites have their own track records for responding to advertising complaints. For example, Bing and Yahoo!’s U.S. sites will often remove an infringing ad upon evidence of a valid U.S. federal trademark registration, while Google U.S.’ site generally declines removing ads infringing a descriptive trademark, even if the mark is federally registered through acquired distinctiveness (aka secondary meaning).

Additional Foreign Considerations: The varied reputations of online advertising sites’ handling of trademark ad complaints are even more disparate at the global level. Many foreign sites have good track records, while others less so. Also, some foreign advertising sites have ad enforcement features that offer benefits beyond those offered on most U.S. websites. For example, China’s leading search engine, Baidu, allows trademark rights holders to register their Chinese registered marks with their representatives in order to prevent others from purchasing infringing ads and ad words on their website. However, like Google, Baidu’s IP enforcement system is imperfect, as it has been criticized in the past for failing to stop the sale of ad words to fraudulent advertisers.

3. Multiple Ad Complaints May Need To Be Filed. Trademark rights holders may need to submit multiple complaints against an infringer before an infringer’s ad appears removed. This can be due to the ineffectiveness of an advertising website complaint system, or more likely because an infringing advertiser has made several ad purchases, requiring the submission of multiple ad complaints in order to effectively remove all of an infringer’s advertisements.

Additional Foreign Considerations: None. Additional complaints may need to be filed for foreign trademark ad complaints as well.

4. Consider The Ramifications Of Filing An Online Complaint. Lastly, submitting an online ad complaint may impact an infringing advertiser’s online reputation as well as the trademark rights holder. Based on these ramifications, trademark rights holders should consider reaching out to alleged infringers, either directly or through an attorney, to see if the disputed ad can be removed amicably.

Additional Foreign Considerations: The consequences of filing online trademark ad complaints abroad is as significant, or even more so, then doing so in the U.S. As I have previously highlighted, countries maintain different beliefs and perceptions towards the legal rights that should be given to trademarks and other forms of IP. In particular, several important and emerging foreign markets such as Canada, Chile and New Zealand disagree with forceful online IP enforcement, as seen in their current rejection of copyright website takedowns. This means that submitting online trademark ad complaints may have similar or even more negative reactions in a business’ particular industry (and among the public) abroad than at home. Based on these circumstances, businesses should feel even more inclined to first reach out to foreign infringing advertisers before they submit online ad complaints.

What’s The Takeaway? As combatting infringing online advertisements has many of the same challenges and considerations in the U.S. as abroad, businesses wishing to protect their brands abroad need to identify the countries where they have or may have significant business and develop strategies to protect against online ad infringement. This requires considering foreign trademark registration, identifying major foreign online advertising websites, and developing processes and procedures to monitor and enforce rights against infringing advertising activity on such websites. Doing so can help businesses to more effectively protect their brands in the foreign markets they wish to grow.