The task of safeguarding and enforcing intellectual property rights was always challenging but the irrepressible rise of social media over the last decade and political shifts like Brexit have added significant new layers of complication.
Social media has become a force to be reckoned with since erupting onto the scene in the early 2000s. With nearly five billion social media users worldwide in 2023 it has never been as easy as it is now for brands to access wider markets far beyond where they are based, with new trends able to develop (and fade) extremely fast. But these opportunities – combined with mounting public scrutiny of social media – raise implications for the methodology of IP protection and enforcement, as well as the way in which a brand maintains its distinctive identity.
It’s an issue that in-house counsel need to be aware of in order to safeguard their IP moving forward.
At the same time as dealing with this, in-house teams must also grapple with the ongoing impact of the UK’s departure from the EU. Brexit disrupted the previously cohesive IP rules and regulations across Europe, with brands now having to hold separately registered trade marks in both the UK and EU.
Social media and the David v Goliath narrative
The current economic climate has led to consumers increasingly opting for cheaper products, and this cost-saving mindset has been capitalised on by some brands.
As a result, lookalike cases appear to be on the uptick. Adding the ubiquitous force of social media into the mix contributes to a more unpredictable landscape, particularly in the case of litigation.
Paul Jordan, partner and head of the brands, designs and copyright group at Bristows, observes: ‘there’s a real drive from some disruptor brands’ marketing teams to take full advantage of the cost-of-living crisis. They are really having a go at the established market-leading brands. We’re seeing some aggressive knocking copy at the moment and are finding ourselves on both sides of comparative advertising campaigns. Given we are most likely seeing the more complex disputes, busy in-house teams (particularly in the FMCG and travel sectors) will be seeing a number of challenging campaigns. Consequently, in-house counsel should ensure they have a good working understanding of this area of law and the surrounding regulatory environment.’
Perhaps the most prominent example of this is the Colin vs Cuthbert debate that took social media by storm, garnering significant attention and engagement from the public. The high-profile case saw Marks & Spencer launch legal action against Aldi over its Cuthbert caterpillar cake, which resembled M&S’s iconic Colin the Caterpillar version. Aldi responded by promoting #FreeCuthbert on social media, including graphics of Cuthbert behind bars and on trial in the courtroom. Through Aldi taking control of the narrative of the dispute on social media, they effectively won the ‘court of public opinion’, with the case ultimately settling in 2022 and Cuthbert now back on Aldi’s shelves.
Arty Rajendra, partner and head of IP disputes at Osborne Clarke, highlights the potential implications for in-house counsel: ‘Where it may come into play is this: are we now going to see these cases fought out on social media rather than in a court? Clients need to be thinking not only about their litigation strategy but also their media strategy around an IP dispute.’
More recently, easyGroup sued the band Easy Life for infringing its IP. Via their Instagram, the band said: ‘They’re forcing us to change our name or take up a costly legal battle that we could never afford. Although we find the whole situation hilarious, we are virtually powerless against such a massive corporation.’
Comments from the public were overwhelmingly in favour of the band, highlighting the David v Goliath narrative that can be utilised effectively by the so-called ‘David’ brand on social media to galvanise public support. As Sally Britton, partner and head of the Brands group at Mishcon de Reya, points out, ‘even if they know they might ultimately lose the case, there’s a lot of ground they can make in the interim or ultimately afterwards to almost double down on it – to almost amplify that messaging and get sympathy from members of the public.’
Significantly, the weight of social media means that the positive effect of winning a legal battle can be tainted by losing in the court of public opinion. Peter Brownlow, an IP partner at Bird & Bird, states: ‘You have to balance the damage to the brand caused by the infringement against the damage to the brand’s reputation.’ Therefore, undertaking an in-depth cost-benefit analysis before pursuing litigation is a necessary task considering the attached reputational risk.
Anneka Dalton, an IP partner at Taylor Wessing, backs this up, adding: ‘In this digital age it is increasingly important for legal to engage with PR at an early stage and really think about the optics of a particular strategy or dispute. Reputation management plays a crucial role in brands litigation, for which the court of public opinion can be as determinative as the court of law.’
Jordan echoes this sentiment, finding that ‘the interaction between an in-house legal team and their PR and Comms team is really critical. Although there might be a legal solution or a lever that can be pulled to get offending content removed, it may not be the right commercial approach as it can give an already contentious issue far more oxygen.’
Fluid branding and connected consumers
Social media is not only affecting the optics of an IP dispute; it also contributes to a more fluid brand identity. With the rapidity in which trends rise and fall online, in-house legal teams need to be able to maintain their brand’s identity and retain relationships with consumers online.
Kate Swaine, partner and co-head of Gowling WLG’s global IP team, says: ‘the traditional mantra for a trade mark is – register that trade mark and use that trade mark in the form in which it was registered to make sure it doesn’t become vulnerable for non-use. You want to build distinctiveness and recognition. But social media, keeping up with fashion trends, trying to be relevant, means there is an increasing pressure for your brand to be dynamic. Absolut is a great example of this. Absolut has lots of different flavours, they have done campaigns where they play with the brand, the bottle, release limited additions, they might combine the brand with something else. Now a trade mark lawyer may be concerned that this doesn’t always reflect what is registered but rooting all of this in clearly defined brand identifiers allow them to play with the brand and retain their distinctiveness, their protection and brand identity.’
Swaine then emphasises that ‘staying relevant and staying aware of trends and the things that make a brand attractive is important.’ Social media can be an incredibly effective tool in promoting and expanding a business, so for in-house legal counsel it’s important to be fluid and adapt to trends online, while maintaining the core identity and IP of the brand.
Britton points out that the nature of social media and the way the public interact with brands through it, mean that companies need to be willing to loosen their control around the brand to some level.
She says: ‘increasingly with social media, the brand has to have a relationship with the consumer and that requires some kind of consumer interaction, which actually requires letting go of control to an extent. This is a challenge for an IP lawyer to understand, particularly when it comes to collaboration. So, a key concern is how you protect the brand and the brand identity plus also collaborating with consumers and other brands.’ She highlights that in-house counsel need to be aware that consumers are interested in the brand identity, noting that ‘what your personality is online is all part of brand identity.’
Notably, low-cost airline Ryanair has capitalised on this shifting dynamic between brands and their consumers, taking an unconventional but humorous approach on social media. Using witty social media posts, while also providing informative insights into its business, has resulted in a strong online engagement with the public.
As Swaine explains, ‘it is about constantly keeping that line that in-house counsel have to tread between giving the room for your creatives to do what they want to do and they need to do in order to enhance the brand but at the same time being aware of the legal parameters, risk and the control elements around it.’
Taking an international outlook in a post-Brexit world
Alongside the complications that social media generates, the post-Brexit terrain gives rise to jurisdictional implications when it comes to implementing IP strategy for in-house counsel.
The UK-EU Withdrawal Agreement essentially cloned pre-existing EU IP rights onto the UK national register, coming into effect in January 2021. Brands now also have to apply for both UK and EU trade marks, which opens the scope for IP enforcement across the UK and EU.
As Brownlow points out, this means that trade mark disputes have become more international, and brands are being more strategic about where to start proceedings. According to Brownlow they are first considering ‘whether the UK or Europe, whether in the Court or the office, which jurisdiction will put the most pressure on the other side.’
He adds: ‘a brand owner might want to sue in the jurisdiction of the infringer because the remedies are easier to enforce, or sue in the infringer’s biggest market, where an injunction will have the most significant economic effect. Alternatively, they may consider suing in the jurisdiction where they are going to get a quick result.’
Another shift is the increase in e-commerce and the subsequent influx of website-related infringement. As Brownlow observes: ‘infringers can sell through the internet and therefore they can be selling in many different jurisdictions simultaneously. A lot of the infringement cases now involve websites or social media and because of the targeting rules in different jurisdictions you quite often have a number of different jurisdictions where it is possible to bring a claim and therefore there is the ability to forum shop.’
Ultimately, as Jordan states, ‘in-house counsel need to be mindful of jurisdictional aspects and implications beyond our shores. What may be acceptable and compliant here may be treated very differently under the law in other countries.’ This jurisdiction-aware mentality and strategic approach is therefore a crucial component when it comes to protecting and enforcing a brand’s IP, and one that is increasingly necessary for in-house legal teams to consider.
Integration, collaboration and education
The challenges in-house lawyers face in relation to protecting their brands in light of social media and the post-Brexit world are significant, and here to stay. Only with effective internal collaboration and a clear strategic and international approach will navigating these issues become a manageable challenge.
As Jordan summarises: ‘in-house need to have those relationships with the key personnel outside the legal team in order to get the best outcome and solution for the brand. It should very much be seen as a team effort to help achieve the best commercial outcome for the brand.’
This is a sentiment supported by Britton, who states that successful in-house teams ‘are the ones that are getting more integrated into the marketing teams and working collaboratively with them. Less silos within the business makes it easier for them to give the commercial advice they need to.’
Alongside collaboration, it is also important for the in-house legal team to educate the wider business about what they can and can’t do from an IP perspective, enabling them to impact the business as a whole.
Fundamentally, traversing the strategic challenges of social media and the post-Brexit landscape requires a collaborative, integrated and educated approach within a business. Succeeding in this will bolster the protection of a brand’s IP moving forwards.