TRADE MARKS: Trade Marks and the Internet and Social Media

By Lena Shen​​​, AIPPI Assistant Reporter General

This morning’s Plenary Session will debate the draft resolution on Trade Marks and the Internet and Social Media. The internet and social media have rapidly evolved into essential marketing tools for many businesses and with this, the physical boundaries between jurisdictions have become increasingly blurred. This has resulted in new challenges for online use and protection of trade marks and this Study Question aims to reach harmonisation on, at least, some aspects thereof.

Lena Shen, the responsible reporter for this Study Question, comments: “Some issues in This Study Question are very controversial which has already led to intense discussions during the Study Committee’s informal online meeting, such as on the liability of influencers for trade mark infringement.”

Out of the 40 reports received, as summarized in the Summary Report (which can be found at www.aippi.org), a large majority (90%) of the responding Groups consider harmonisation in relation to trade mark protection on the internet and social media as desirable. Most Groups consider that use of a trade mark on the internet and social media can be infringing, but when specific use is discussed, different opinions are expressed. The most controversial is the use for a comparison, which shows split views of the Groups on whether or not this constitutes trade mark infringement. Furthermore, the majority of the Groups indicates that there should be a special provision and mechanism for trade mark protection on the internet and social media, but no special test for online trade mark infringement as such. And almost all Groups agree that online market platforms should provide services to stop trade mark infringement, e.g. a “notice and take-down” tool. And lastly, according to the Summary Report, 80% of the Groups consider that a social media influencer should be liable for endorsing a product or service if it is found to infringe.

Following the informal online Study Committee meeting that took place prior the Congress, a revised draft resolution was circulated and discussed in the in-person Study Committee meeting here in San Francisco on Saturday. Jonathan Moss, chair of the Study Committee, says: “We have already seen a lot of debate on this Study Question and I am looking forward to the further discussions!”.

Today, the draft resolution will be further discussed during a Plenary Session chaired by Eryck Castillo, and later at the Congress it will be presented to ExCo for approval. Lena Shen says: “This resolution is expected to provide a clearer direction on the discussed issues relating to trade mark use and protection on the internet and social media. And it shows that AIPPI is always open to discuss issues related to new technological developments!”.