Crank up social network vigilance warns lawyer

Beverley Head
Wednesday, 20 October 2010 15:33

Business IT - Networking

Australian organisations need to crank up their vigilance when it comes to protecting their trademarks online, and particularly on social networks, according to intellectual property lawyer, Jonathan Feder.

Mr Feder, a senior associate at Middletons, said that while people have always protected their trademarks in the physical world, organisations also need to take better care of their trademarks in the online environment, and the same holds for copyright material. Online services and social networks would not in general actively police the use of trademarks on their sites, he warned.

According to Mr Feder it was up to the IP owner to comb such networks looking for possible IP violations which then needed to be tackled. A range of tools such as Hootsuite, Google Reader or TweetDeck are available which can help organisations keep a watch eye on their trademarks and brands.

Mr Feder pointed to a recent Federal Court case which for the first time provides certainty for Australian lawyers in terms of the use of trademarks online in URLs.

In Mantra Group v Tailly Pty Ltd, the Federal Court of Australia found that a copyright infringement had taken place with Tailly using Mantra's Cavill on Circle trademark inappropriately online. In his decision handed down in March, the Federal Court's  Justice Reeves issued a restraint on Tailly which effectively barred it from using that trademark in advertising, including using it as part of a domain name, as a metatag, a search engine keyword or business name.

Justice Reeves reserved his decision on the question of whether Tailly had also been in breach of Sections 52 or 53 of the Trade Practices Act.

The judgement makes for interesting reading. It notes that; 'If Google is informed a particular person holds a registered trademark'¦it will not allow anyone else to use those words as a keyword.' But the judgement noted that this did not apply to attempts to use words similar to a trademark.