In this third installment of the Online Brand Protection 101 series, we take a look at how having a registered trademark contributes to protecting it against fraud and infringements in the online environment.
Contents:
What a Trademark Registration Is and What It Protects
Trademark registration is the administrative process through which official protection of a distinctive sign is requested to obtain exclusive rights to its use.
In other words, it is how we formalize that a name, logo, or other types of trademarks distinguish our products and services from those of competitors and limit the use that third parties can make of them.
However, registering a trademark does not only mean preventing others from using it; it also stops third parties from registering or using similar signs for similar products or services.
We recommend reading our comprehensive Guide on Trademark Registration to learn more about the types of trademarks and how to register them.
Trademark Registration in Online Brand Protection
Having a registered trademark is essential for Online Brand Protection, as it establishes the starting point to determine what content is protected by the trademark and, consequently, which activities constitute infringement or misuse. It enables taking the necessary actions to cease such activities when they occur.
In the various areas related to Online Brand Protection, having a registered trademark is key to the successful resolution of conflicts concerning trademark use, as well as fraud risks. Let’s look at some examples:
Domain Names
When a third party has registered a domain name containing our brand, having the trademark registered prior to the domain registration will be a key factor in obtaining the blocking or transfer of the domain.
One of the landmark cases in 2000 was World Wrestling Federation Entertainment vs. Michael Bosman. Bosman registered the domain worldwrestlingfederation.com intending to sell it to WWF (now WWE), who filed a UDRP with WIPO. In its ruling, the fact that the “World Wrestling Federation” trademark had been registered long before the domain was key to determining that Bosman had no legitimate rights to the name and that the domain was registered with bad-faith intent to profit.
Additionally, as we explain in our article about domain name auctions, the legal protection that registered trademarks provide helps defend brands against the unauthorized registration of domains for profit-driven purposes, thereby preventing possible fraudulent campaigns such as phishing or brand impersonation.
If the brand takes the appropriate legal actions, the domain must cease its activity, be blocked, canceled, or have its ownership transferred according to the brand’s interests.
This also includes cases where third parties register domains containing trademarks with speculative intentions, which is considered cybersquatting.
In 2008, Verizon sued Catalyst Systems for registering hundreds of domain names with deliberate typographical errors of its name (such as “verizonn.com”). The court ruled in favor of Verizon, awarding them $33 million for trademark infringement and cybersquatting.
Digital Contents
Having a registered trademark establishes what constitutes unauthorized use of the brand in third-party content. Such content may include:
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Mentions of the brand in text and images.
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Use of the logo.
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Use of brand styles or the overall look & feel.
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Use of content protected by copyright.
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Mentions in social media posts and profiles.
While not all mentions of the brand in content constitute infringement, such as user and customer mentions and opinions, or collaborations under commercial agreements, the trademark registration provides legal protection against other types of infringements, such as unauthorized exploitation.
As an example, we recommend reading the analysis we did on the fake Lamine Yamal profile case on X:
In the realm of digital content, brand disputes are primarily related to copyright infringement. In the field of Online Brand Protection, the focus is on the elimination and prevention of online fraud, such as cloning legitimate websites, brand impersonation to steal user data, or the mention of brands alongside fraudulent links in profiles, comments, or posts on social media.
Sales Channels
Fraud in the sale of products on eCommerce platforms and marketplaces often involves the unauthorized use of trademarks in both text and images. To sell counterfeit or copy products, the legitimate brand is frequently mentioned in the product title or description, or the official logo or brand images are added to the product image gallery. Sometimes even altered images are used, where the legitimate logo is placed on a product unrelated to the brand.
In all these cases, registered trademarks are protected by law, and platforms are required to respond to brand owners’ requests and remove these products.
The law also considers unauthorized distribution of branded products as trademark infringement. This applies not only to third parties without distribution agreements but also to those who breach contractual clauses, such as distributing products in unauthorized markets or channels, or in ways that could harm the brand.
An example is the case of L’Oréal vs. Websales Ibérica, in which the Spanish Supreme Court addressed the online sale of luxury cosmetic products from L’Oréal Group brands (such as Lancôme, Yves Saint Laurent, and Cacharel) by Websales Ibérica, a company operating outside of L’Oréal’s selective distribution network. Although the Court rejected the idea that online sales alone justified an exception to trademark exhaustion, it determined that the way the products were marketed online harmed the luxury and prestigious image of the brands. Therefore, it ruled that L’Oréal had a legitimate reason to oppose this commercialization, constituting trademark infringement.
Best Practices in Brand Management
How a trademark portfolio is managed impacts the protection of our brand, starting with the preliminary analysis before filing the registration and the subsequent management of our trademarks.
Brand Register
Thoroughly analyzing needs across all usage contexts, including digital or online environments, before registering one or multiple trademarks is highly recommended to ensure comprehensive protection of business assets in the short, medium, and long term.
As explained in our Trademark Registration Guide, we should ask ourselves:
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Whether we need to protect only the main trademark or also secondary marks (business lines, products, etc.).
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What the primary activity of the trademark is.
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What type of trademark we should register in each case (word mark, figurative mark, combined, positional, etc.).
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Which classes under the Nice Classification are relevant and cover our trademark.
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At what scale we will use the trademark (national, community, or international).
For optimal protection, all these points must consider business plans, such as expansion into other territories and markets.
Once we know what we need to register, a feasibility study should be conducted to detect potential conflicts with already registered trademarks. This study minimizes the risks of potential suspension of trademark applications and the resulting financial losses.
Trademark Portfolio Management
In the case of complex businesses managing multiple brands, business lines, and product development, it is advisable to implement best practices that scale the protection of their trademark portfolio in parallel with their growth.
Among these best practices are:
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Thoroughly understanding our trademark portfolio by defining priorities and protection levels based on the jurisdictions where we operate or plan to expand, as well as the activities and environments in which we want to operate, aligned with business plans and objectives.
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Implementing trademark watch solutions to detect attempts to register identical or similar trademarks.
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Conducting active and strategic market and competitor monitoring, especially during development phases and prior to the launch of new products or services.
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Implementing fraud detection and anticipation measures, such as monitoring domains and website content.
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Deploying solutions to detect counterfeits, copies, and unauthorized distribution across online sales channels.
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Controlling suspicious domains through monitoring services that help prevent phishing attacks leveraging our brands.
Conclusions
Registering a trademark is essential to secure legal protection against infringements, abuses, and illicit or harmful uses. However, doing so properly and integrating it into our Online Brand Protection strategy strengthens our business against online fraud and other infringements in the digital environment.
Online Brand Protection 101 series
Recover the contents of the series:
- What is Online and Protection
- What is Cyber Squatting
- The key role of Brand Registration
- Giving visibility to problems: essential audits