snIP/ITs Insights on Canadian Technology and Intellectual Property Law

Online Brand Protection Strategies – Five Steps to Developing Your Plan

Posted in E-Commerce, Intellectual Property
Beth Macdonald

A company’s brand is a key asset and needs protection both offline and online - so if you haven’t yet embarked on an online brand protection strategy, where do you start?

Your trade-mark, or brand name, is what distinguishes you from your competitors. In effect, trade-marks provide a shortcut to get consumers to where they want to go (as described by Mr Justice Binnie in the Mattel, Inc. v. 3894207 Canada Inc.) And, hopefully that is leading consumers to you, and not to a cybersquatter, pay-per-click site, or to a site that is trying to defraud your customers.

Gone are the days when businesses can chose to ignore what is going on over the Internet and in social media. If you don’t look after your brand online, no one else will. And, you won’t like what happens to it.

So, what do you do and where do you start? Here are some suggestions:

  1. Start with getting your assets in order. Register your trade-marks. Get assignments of copyright for all of your logos. And, buy lots of domain names with permutations of your name and marks in them. Some industry insiders suggest that third party domainers are much more proactive at registering domain names of brand owners than the brand owners are themselves.
  2. Audit your business’s own use of your marks. Is your website displaying the right trade-mark and copyright notices of ownership? Are you using your trade-marks as adjectives and not nouns in your marketing material (e.g., “Buy ABCtm pencils”, not “buy ABC”) Remember that if you don’t use your trade-marks properly, you can lose them.
  3. Make sure all of your trade-mark licensees have written license agreements that protect your brand and give you the control over the licensee’s use. And, make sure to include your corporate affiliates under these types of written agreements.
  4. Make a list of your business’ brand enforcement and protection priorities. Is consumer protection (identity theft, counterfeit goods and fraud) a top priority or are brand dilution or traffic diversion bigger issues? Remember that you cannot anticipate every type of third party usage, but having a prioritized list of issues will help you spend your enforcement and protection budget wisely.
  5. Now you are ready to implement your plan. You’ll need someone to monitor and triage the internet and social media use of your brand by others. So you’ll need to have an employee do this regularly or you can use a third party search house. If you are new at this, don’t bite off more than you can chew. Start with one key area of your plan and branch out after you’ve got that area managed. New issues will come along to interrupt your well made plans, but with your priorities in place, and some triaging, you will know where any new issues fit on the spectrum of risks and concerns and you can take action, or not, accordingly.

Do you have a online brand management strategy in place?  If so, I’d love to hear about your “best practices”.