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Tag: trademark surveillance

ZARA vs. Zara: A Trademark Tale

What happens when a big multinational company discover that it’s trademark name is being used in a fraudulent way by another business? Should legal action be taken in order to protect its brand?

This occurred some months ago, in April 2015, when a very well-known fashion brand sued an Indian Tapas Restaurant for Trademark infringement. The fashion brand in question was the internationally renowned fashion retailer, Zara and the parties involved were Inditex Group, the Spanish company that owns the famous clothing brand ZARA, and  the Chennai based restaurant, “Zara Tapas Bar”.

It could look like Inditex was taking advantage of its position as a multinational giant in order to create a monopoly over the Trademark term. However, this couldn’t be further from the truth. A brand name is one of the most important intangible assets that a company owns, and should be protected against any action that may discredit it.

This is also the view of the Delhi High Court who ruled in favour of the clothing brand, ordering the restaurant to change its name. The defendant’s main argument was not successful: they claimed that, considering that both companies functioned in different areas of service, it was unlikely that it would cause any confusion amongst potential clients. And, even if this argument could have been valid in any other scenario, the Court Members concluded that the defendants wanted to benefit from the reputation and goodwill of the plaintiff.

The 2 main factors that the Court took into consideration when siding with the Spanish multinational were:

  1. The nature of use of the mark. The Defendant claimed that they were not using the mark ZARA per se, but “Zara Tapas Bar”. However, as its website and pages of social networking showed, it was mostly promoting the brand with emphasis on Zara rather the entire mark Zara Tapas Bar. Moreover, the Defendant associated itself with Spanish products (Tapas), where the plaintiff’s brand originates from. Clearly, leveraging the brand equity built up by Zara (the fashion brand) was demonstrated.
  2. The mark becoming Publici Juris (of public right). The Defendants argued that the mark had became common property and even provided a list of marks containing the name Zara. However, the Court stated that it is the choice of the plaintiff to take legal actions against infringers if they perceive it necessary.

So Trademark infringements can be found between companies operating in different industries, even if, as we have seen, neither them nor their goods and/or services, present any similarities at all. To avoid confusion and future problems it is always recommended to count on a good domain management strategy from the very beginning.

In conclusion, what does this mean for brand owners? Monitoring keywords pertaining to your brand is essential in today’s digital age. Investing a little will save a lot in the long run. Proactively enforcing a brand protection strategy is crucial when protecting your brand and digital assets.

dotNice – experts in digital brand protection
For more information email: brandprotection-emea@dotnice.com

Protect Your Brand Without Breaking the Bank

Digital Brand Protection For Start-Ups

Making your start -up a success is no easy feat. Recently Forbes magazine revealed a bleak truth that 9 out of 10 startups fail. It goes without saying that entrepreneurs face many challenges when developing their business into a thriving successful enterprise. One key feature that arises time and time again regarding the failure of a startup is their inability to garner trust from new customers. Without loyal customers, you have no business. One of the greatest challenges facing brands today is building your brand name into something or someone associated as trustworthy. Building this trust with your prospective customers is a true recipe for success. It naturally makes sense that start-ups should protect their online brand identity.

How can a start-up with limited budgets and resources fully safeguard their online identity and brand integrity?
We outlined a list of precautionary steps below on how to safeguard your digital brand presence without breaking the bank!

1. Invest a Little, Save Alot.

Invest a little time and revenue in developing your domain name portfolio. If your business is expanding into new markets, ensure you have trademarks registered in all countries you operate in. Investing a little revenue in trademark monitoring will help you manage your intellectual property assets proficiently. This will allow you to be aware if some third party is trying to harness your brand equity. It also will allow you to identify any case of infringement.

2. Embrace New Opportunities

Optimise your domain name portfolio by registering appropriate new gTLD’s. When used correctly, domain names can be integrated as part of an effective digital marketing campaign for start-ups with limited funds and resources. In this way you can further develop your digital asset portfolio, whilst also generating web traffic to your website. Two birds, one stone!

3. Stay One Step Ahead: Defensive Registrations.

Following on from celebrities like Taylor Swift, Kevin Spacey and Oprah Winfrey, defensively registering ‘controversial’ domain extensions may save your business huge fortunes down the line. Many enterprises are purchasing the domain extension dot-SUCKS in a bid to ensure that opportunistic domain-squatters or brand-hijackers don’t get the chance. Failing to register your brand name with this controversial gTLD could result in your brand falling victim to online slander, brand-jacking and defamatory abuse.

Alternatively, you can turn something bad into something good. Many online brands are choosing to redirect Web traffic from a .SUCKS domain to a ‘customer service forum’ where customer comments can be voiced. This is an excellent example of turning a bad situation into a good one. This would allow you to always stay informed of what your customers think of your product or service and allows you great opportunity to further enhance your customer relationships. Adopting this ethos when your business is still in start-up phase will definitely contribute to your success.

4. Renew, not Regret

Renewing an expired domain name is considerably cheaper than negotiating a domain sale with a third party. In the long run, renewals are cheaper than legal arbitration proceedings. Many start-ups simply would not have the capital to recover a domain name from a domain squatter. Therefore, It is important to make sure you have enough resources to monitor domain expirations, particularly if you have a global presence.

5. Trademark Trolling

All Startups must monitor the domain names related to their trademark. Failing to do so could result in a domain-squatter or typo-squatter registering a web address. Investing a little capital in trademark surveillance services will ultimately save you potentially huge financial costs in the future.

6. Reputation Reporting

It is essential in todays digitised world for startups to monitor their online brand reputation. Web tracker software can provide valuable insights into the public’s perception of your brand or product. Approximately 8 in 10 American consumers read customer reviews prior to purchasing and item or service. In other reports, it was revealed that 73% of prospective customers considered positive consumer reviews as a deciding factor in making them trust a particular brand. As startups begin to scale, it is crucially important that while you establish your online reputation, you also safeguard it from slander. Maintaining awareness of what is being said in the public space (social media, online platforms and peer to peer networks) will be key to your start ups survival.

Although scaling your startup can seem like a daunting task, implementing some of the steps above will ensure your businesses future success in the digital space. Maintaining a solid digital brand protection strategy will assure that your business will not only survive, but thrive.



dotNice International Limited – Experts in Digital Brand Protection
For more information email: brandprotection-emea@dotnice.com

Surviving in the Digital Space

Surviving in the digital space can pose difficult challenges to business owners. In order for businesses to survive today in the digital world they must have an online presence. It goes with out saying that traditional models of business have dramatically changed with the advent of the internet. The digital age has brought enormous opportunities for aspiring entrepreneurs and established businesses alike. The global market is within arms reach with merely a laptop and a solid wifi connection. Unknown performers can suddenly become an internet sensation over night, businesses can increase their global reach into new markets with minimal cost and consumers have greater choice and say in the product they choose, or don’t choose to purchase.

Indeed, the digital space has created unprecedented opportunities for businesses to grow and evolve. However, it also presents brands with novel challenges. Global IP management is complicated and digital technology is constantly changing at an ever increasing pace. Many brand or marketing managers naturally are intimidated by this new, innovative digital landscape.

Savvy, intelligent brands invest time and money into promoting, protecting and growing their brand identity and reputation online. They understand that a brand’s online presence is intrinsically connected to a brands bottom line and survival. However, many organisations have no concrete or focused strategy for managing their most important intangible asset – their online presence.

So, what constitutes a brands digital or online presence?

All brand portfolios today are digital or at least should be.

Smart digital brands view their digital assets (domain names, social media platforms etc…) from a holistic perspective. This all- encompassing approach to brand management as a single entity is at the core of thorough digital brand protection strategies. In order to fully manage your online presence, brands need to monitor and manage their domain name portfolio (gTLD’s , ccRLD’s and IDN’s) track their registered trademarks, supervise social media sites and of course protect all their digital assets from external abuse or internal misuse. The only way to succeed in the digital space is to manage your digital asset portfolio centrally.

All organisations want to protect their brand online at minimal cost. They seek to increase their global reach and break into new markets whilst securing their digital assets against fraudulent online behaviour and cybercrime. This can be a daunting task for brand managers managing established international brands due to the size and complexity of their digital asset or IP portfolio. Scaling smb’s who wish to expand into international markets also find it difficult to implement a digital brand protection strategy. Many can be confused as to where to start. Needless to say, whether you’re a long established global brand or a developing SMB, your enterprises success in any case relies on the effectiveness of your digital brand protection strategy. Ultimately, spending a little will save a lot!

How can intangible assets like digital assets be protected and managed?

Managing your digital asset portfolio involves three key essential steps: monitoring, managing and enforcing.

1.Monitoring:

Are you monitoring all domain names related to your trademark internationally? Trademark surveillance and monitoring are essential in preventing IP infringement or online abuse in protecting your domain names. This ongoing supervision and investigation is crucial when safeguarding your digital assets as it ensures you are aware when third parties attempt to harness your brand equity.

Similarly, who is monitoring your online reputation? Have you implemented tools to gauge online sentiment on social media and peer to peer networks regarding your digital brand? Have you identified any cases of defamation against your brand reputation? Successful supervision of your brand reputation involves monitoring of the whole web. Integrating online monitoring toolkits will allow you to keep your finger on the pulse of public perception pertaining to your brand. Maintaining monthly brand sentiment reports will help you stay on top. A proactive approach is required.

2 Managing:

Enterprises often fail to competently manage their digital asset portfolios as many of the departments responsible for such supervision often work in isolation from one another. Managing digital assets often is the responsibilIty of three key departments within an organisation – a. Marketing/ Brand management, b. Legal or c. IT. In most instances, these three departments generally work in silo’s and fail to communicate with each other. Employing an effective digital brand protection strategy engenders that all three departments work collectively.

When managing a domain name portfolio, communication between all three departments is essential. Using a centralised platform that aggregates all important information about your portfolio will greatly improve management processes. In many cases, outsourcing the management of your portfolio to an experienced and specialist third party often yields better results than internal management.

3. Enforcement

All organisations with an online presence know of the threats that face their digital brand each day. Cybercrime is increasing every year and the expense it can incur for digital brands is enormous. Enforcing a thorough digital brand protection strategy ensures enterprises’ have safeguards in place to defend against instances of cybercrime. It allows them to act efficiently and cost effectively when required. Applying a proactive approach to enforcing your brands online IP rights will safeguard your brands most important intangible assets. Recovering domain names from third parties can be a complex process for those unfamiliar with UDRP. Consulting with legal experts who have extensive experience in this field will save you time and money and ultimately benefit your digital brand.

dotNice International Limited – Experts in digital brand protection

For more information email: brandprotection-emea@dotnice.com

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