Monthly Archives: August 2015

#facebook #twitter #brandprotection

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By Ruan Dickinson

1.49 billion… that is the massive number of active users on Facebook which is the world’s largest social media platform. In second place we have Twitter with an average of 316 million active users per month. Just to put it in perspective that means that an average of 21% of the entire population visits Facebook on a monthly basis. Facebook and Twitter falls within the top brands of the world and have invested countless hours and money to protect and grow their businesses to what they are today.
But what does this unthinkable numbers of active users even mean to social media giants like Facebook and Twitter? Well let me state the obvious first, it means money, power, control and an endless list of opportunities. However, (and I think you know what is coming)… with great power comes great responsibility, especially from an intellectual property perspective. These companies have to manage a massive amount of intellectual property matters daily.

As for the hundreds of millions of people permanently on these websites it creates an excellent platform to advertise your brand and to get your name out there. As such, countless businesses create profiles and post adverts on these social media platforms to attract custom and to build their reputation. However, because of the nature of the publicity, it can also be extremely harmful to your business if someone is using your name, logo or trade mark in such a way that it may confuse others. As this sort of infringement is relatively new, people are unaware of what steps to follow and of the severe damage that it can be caused to their businesses.

Therefore, if you come across any potential infringement to your intellectual property it is best to act immediately so that the reputation of your business remains unharmed. When faced with such a matter there are certain steps to follow. Firstly, when you are unsure whether or not infringement is taking place it is best to seek legal advice. Once it is established that your intellectual property rights are being infringed, you may want to consider approaching the other side directly as to lodge a complaint through Facebook as the issue might get easily resolved without going through a time consuming dispute. When the matter is being handled through Facebook or Twitter you will need to provide them with information including your company name, account, trade mark(s), trade mark registration number(s), office of registration, goods or services covered by the registration and the username of the reported account. Furthermore, you will be required to submit a declaration incorporating a description of how you believe your intellectual property rights are violated.

Once your claim has been submitted with Facebook or Twitter they will review the alleged infringing content and may take certain actions against the alleged infringing party including but not limited to, removing the infringing content, suspending the account and allowing the infringing party time to take down the reported content. The social media companies will also provide the infringing party with your full details so that they can contact you directly should they be of the view that the content is not of an infringing nature. When you are on the receiving end of a warning from Facebook or Twitter due to a claim of alleged infringement the same as above apply. You will be provided with the full contact details of the other side to counter their application which removed your content from the platform should you feel that the content was not of an infringing nature.

Due to more than 30 billion pieces of content being posted on Facebook per month and over 500 million tweets being posted on Twitter per day it is completely impossible to stop others from posting content on these platforms which are infringing your intellectual property rights and simultaneously confusing the market in respect of your business. However, a good tool to use to minimise the risk of any possible confusion is to fully complete your profile on these platforms by providing your company’s full contact details, website address, biography, all trade marks and posting regular updates on your company’s profile. By doing the latter all the people viewing your profile on Facebook or Twitter will be able to clearly distinguish between the “real business” and any infringing pieces of content being loaded onto other profiles.

Facebook and Twitter have created new challenges when it comes to intellectual property infringement and the way we deal with it. When faced with these challenges it is best to seek immediate legal advice to protect what is rightfully yours and prevent others from harming your brand in the virtual world.

This article is a general information sheet and should not be used or relied on as legal or other professional advice. No liability can be accepted for any errors or omissions nor for any loss or damage arising from reliance upon any information herein. Always contact your legal adviser for specific and detailed advice.

The Trademark Clearing House

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By Vicky Stilwell

The Trademark Clearing House (TMCH) is a centralised repository service for the validation and protection of trade marks. The TMCH is operated by ICANN, which is in the process of launching some 1900 new generic top level domains (gTLD’s). The gTLD’s that have been launched to date include .world, .business, .network, .software, .auction, .property and .investments, to name a few. A bank, for example, may want to register its trade mark under the gTLD .bank. There may also be several additional relevant gTLD’s, such as .finance and .loan.
The TMCH provides a unique central process for the validation of trade marks for strategic defensive purposes. The main advantage is that it affords trade mark owners, who have validated their trade marks with the TMCH, the opportunity to register domain names, matching their trade marks, within the “sunrise period” following the launch of each new gTLD, before such domain names are made available for registration by the general public. In addition, if a trade mark owner has validated his trade mark with the TMCH he will be notified of the launch dates of all new gTLD’s as such launch dates are announced by ICANN.

The TMCH also notifies the owners of validated trade marks if any third party registers, or attempts to register, a domain name matching their validated trade mark. This is of great assistance to trade mark owners in preventing so-called “cybersquatting”.
A trade mark owner that wishes to enforce his rights and take action in respect of a domain name that has been registered by a third party may file a complaint in terms of ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP) and rules or its Uniform Rapid Suspension System (URS) rules, the latter of which is a lower cost, faster path to relief which can be used by trade mark owners in the most clear-cut cases of infringement.
A large number of new gTLD’s have already been launched, and there are many still to come. It is therefore important for brand holders to validate their trade marks with the TMCH as soon as possible to enable them to enforce their trade mark rights and to register domain names with extensions that are relevant to their businesses during the sunrise periods of the relevant gTLD’s. The TMCH validation process allows for the validation of trade marks for a 1, 3 or 5 year period.

In the event that you require any further information regarding validation of trade marks with the TMCH, the new gTLD’s that have, or are still to be, launched, or the domain name dispute resolution process, please contact Vicky Stilwell at vickys@dmkisch.com or Robin Richardson at robinr@dmkisch.com.

This article is a general information sheet and should not be used or relied on as legal or other professional advice. No liability can be accepted for any errors or omissions nor for any loss or damage arising from reliance upon any information herein. Always contact your legal adviser for specific and detailed advice.

The pitfalls of joint ownership in IP

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By Thomas Schmidt

The Montana Meth Project, an American non-profit organisation, infamously popularised the phrase “meth: not even once” as part of a media campaign to raise awareness about methamphetamine use. In Intellectual Property law, replacing the word “meth” with “joint ownership” would admirably encapsulate the feelings of some attorneys on this matter.

Joint ownership of IP occurs wherever two or more applicants cannot separate their contributions to a given piece of IP, and so apply for protection of the same subject matter together. In South African Law joint ownership is recognised in Patents, Design Registrations, Copyright and Plant Breeder’s rights. Almost without exception, the existence of other joint owners severely restricts the ability of an applicant to develop, use, promote and generally enjoy the fruits of the jointly owned IP.

A representative can be found in the form of joint ownership of patents. In terms of the South African Patents Act 57 of 1978, joint applicants for a patent are deemed to have ownership of it in equal, undivided shares where no other agreement to the contrary is present. Further, consent of all joint patentees is required to make, use, exercise, sell, grant licences, assign his interests in the patent, or institute any proceedings related to the patent. In effect, each joint patentee is granted a negative right against the other/s over any matter not directly related to the maintenance of the patent. This extends to the court, where joint patentees are allowed to institute proceedings for infringement on their own. Even here, however, they must give notice to every other joint patentee. In the event of disputes between joint applicants, any applicant may apply to the Commissioner of Patents to decide the matter in dispute.

Taken together, the above is a recipe for strife. Even where good intentions are evident on both sides (a state of affairs which money tends to dilute), the inability of one joint patentee to act without the other can paralyse any attempts to properly exploit the invention. Short of a truly comprehensive agreement, there will always be cases where one of the joint inventors is unwilling or unable to provide consent. And when one obstreperous partner can effectively veto any aspect of the commercialisation of the patent, the potential for brinksmanship becomes exceedingly high.

In order to avoid the pitfalls of joint ownership, care should be given to the legal relationships governing the people involved in creating the IP. These legal relationships can be managed by putting agreements in place which set out clear rules for dealing with the IP, and which provide mechanisms for resolving potential conflict between the joint owners. Several options are available to joint IP owners in this regard. Joint patentees may retain their joint ownership but conclude a Joint Ownership Agreement in terms of which one party is authorised to make, use, exercise, sell, grant licences, assign his interests in the patent, or institute proceedings related to the patent independently of the other, or they may assign the IP to a separate IP holding company in which both parties hold shares and have a board of directors manage the IP. Alternatively, the parties may wish to deliberately re-separate the IP by assignment thereof from one party to the other party or by both parties to a third party or by cross-licensing. It is good practice to have all parties involved sign Non-Disclosure Agreements in order to preserve the novelty of inventions, and contracts of employment should always include clauses assigning the rights arising from IP from the employee to the employer so as to ensure that any IP that is created is capable of being exploited.

The above-mentioned approaches all, of course, involve a certain amount of care and investment on the part of the stakeholders. This investment, however, is amply rewarded in the form of regularising of relations and de-escalation of conflicts that arise from issues of ownership.

This article is a general information sheet and should not be used or relied on as legal or other professional advice. No liability can be accepted for any errors or omissions nor for any loss or damage arising from reliance upon any information herein. Always contact your legal adviser for specific and detailed advice.