As Twitter fever sweeps the globe, a number of serious legal and ethical issues are beginning to surface. One such legal issue that has arisen in recent months is “Twitter Squatting.” This is where someone steals your trade mark on Twitter. A similar problem occurred when domain names first started appearing and people were holding businesses to ‘ransom’ with the purchase of a domain name relevant to that business. So what can you do to protect your trade mark on Twitter?
What is Twitter Squatting?
Each Twitter user has their own unique user ID which appears as their screen name. With more people signing up to Twitter everyday, businesses are finding that ‘Twitter squatters’ are registering User IDs that ‘steal’ a businesses registered trademark. Coca Cola for example presumably had to register CocaColaCo as its user ID initially due to a third party already having grabbed CocaCola as their User ID.
What can you do?
If you’re unlucky enough for someone to already have taken one of your trade marks as their User ID there may not be a lot you can do if the person is using the User ID legitimately. This could be due to a few reasons.
If you have a registered trade mark in Australia and the person who is using your trademark as a user ID on Twitter is not trading in Australia, then you may not have an action. This is because trade marks are registered and therefore protected only in the country of trademark registration.
Also, the other person may be trading in a business that is completely unrelated to yours, for example a software company versus a recruitment firm. Trade marks are registered in ‘classes’ that relate to the goods and services being sold under the trade mark. You may be able to argue there is some level of confusion in the market-place or they are trading on your reputation, but this is very difficult to do if the industries have no ‘cross-over’ and/or the businesses trade in different countries.
However, Twitter is not the ‘wild west’ in terms of protecting your rights. Twitter has Terms of Service which list ‘Name Squatting’ as against the Twitter Rules. Twitter states that they support company brands and honor legal trade marks so the first step is to lodge a complaint with Twitter who will investigate your complaint and terminate the alleged infringing account if they are satisfied your claims are legitimate. Interestingly, the CocaCola Twitter ID was suspended so presumably Coca Cola lodged a complaint which was investigated.
If the ‘squatter’ is actively using the account, you may also consider an action for trade mark infringement (subject to the above comments), passing off (trying to pass off a connection with your business that is not there) and /or breach of the Trade Practices Act for misrepresentation and/or misleading and deceptive conduct.
Protecting your trade mark on Twitter
If you have therefore thought about protecting your brand on Twitter and intend to use Twitter to help promote your business, you should consider registering your trade marks as Twitter User IDs. Be aware however that Twitter may suspend your account if it is inactive for greater then 6 months.
If someone is already using a trade mark of yours, as aside from investigating any possible action you could take against them; you could consider doing what Coca Cola did, which is to open a User ID that is very similar to your trade mark and in that way direct traffic to your business. This could be a useful interim step at the very least, while waiting for Twitter to consider any complaint you may have lodged with them regarding use of your trade mark.
Kerry-Ann Aitken is a Principal for Outsourcedlaw www.outsourcedlaw.com.au