With over 3 billion active users each month, Facebook offers businesses unparalleled access to a vast number of potential customers. This exposure, coupled with the platform’s versatility, has led to Facebook becoming the go-to social media platform for small businesses. Unfortunately, it’s not only brand owners that understand the power of trade marks on Facebook; impersonators and scammers do, too.
To help, we have produced this guide, which discusses how to identify trademark infringement on Facebook and the steps you can take to tackle it and protect your brand.
If you have found this guide because someone’s using your trade mark without permission on Facebook, whether it’s counterfeit products, impersonating your brand, or unauthorised advertising, our experienced trade mark solicitors are ready to help. We’ll explain your options, deal with takedown requests where needed and work with you to keep your brand protected online
Contents:
- How do I identify trade mark infringement on Facebook?
- How do I report trade mark infringement on Facebook?
- What is the Facebook brand right protection tool and how does it help me resolve trade mark disputes?
- How can I resolve a trade mark infringement dispute on Facebook?
- What are my options if they dispute my claim?
- How long does it take for Facebook to remove an infringing post?
- What are your options if Facebook refuses to take action against the seller?
- Summary
How do I identify trade mark infringement on Facebook?
Early identification of trade mark infringement on Facebook can prevent harm to your brand. The enormity of Facebook’s potential reach means that any delay in reacting to trade mark infringement can result in significant dissemination of the harmful content.
A key tool in identifying trade mark infringement on Facebook is the site’s own Brand Rights Protection Tool, which we discuss in detail later in this guide. Other methods include:
- Using brand monitoring software to tackle the issue at scale. These systems continuously scan social media platforms, including Facebook, for any mention of your brand name or variations of it. It will notify you of any it identifies and you can then check whether the use is valid or infringing.
- If your need or budget does not warrant paying for external monitoring systems, you can undertake periodic Facebook searches yourself. Simply insert your brand name and variations into the Facebook search tool, and you can see how it is being used. A search of #chaneljewelry, for example, reveals 31,000 posts, many of which originate from spoof accounts.
- Educating your workforce and consumers about the issue and encouraging them to report anything suspicious to you for investigation
Once you’ve identified an instance of trade mark infringement, you need to identify how best to address it. Common methods include reporting the issue to Facebook, contacting the poster to demand its takedown, and in severe cases, taking legal action. Legal action may be suitable where the unauthorised use of your branding is part of a wider, targeted pattern of infringement as opposed to a one-off incident. Our trade mark solicitors can advise you on the appropriate method of tackling any specific infringing activity on Facebook and take the necessary action on your behalf.
Before you can take any legal action you must be certain that the activities do constitute trade mark infringement. If they don’t, you may get caught out by the ‘unjustified threats’ legislation. This legislation allows anyone accused of trade mark infringement to turn the tables on a brand owner by asserting that their use of the trade mark does not constitute infringement, so the threats are unjustified. Unjustified threats give the recipient the right to issue legal proceedings against a brand owner, seeking an injunction to restrain further threats and claiming damages for any losses they sustained.
The Court of Appeal has confirmed that, in some circumstances, a takedown notice can qualify as an unjustified threat and bring the unjustified threats legislation into play. If there is any doubt over the legitimacy of the third party’s use of your trade mark, any correspondence relating to it, including takedown requests, must be very carefully worded.
Given the potential consequences of falling foul of the unjustified threats legislation, taking legal advice before addressing any instances of trade mark infringement is essential. Our trade mark solicitors can help businesses develop and implement online brand protection strategies. They will assess the third party’s use of your brand name, advise on the best way to tackle the issue, and take any appropriate action.
How do I report trade mark infringement on Facebook?
One of the main methods of tackling trade mark infringement on Facebook is reporting the issue to Facebook using its online form.
The form asks for a series of information and documentation relating to your trade mark and the third party’s alleged infringements. For example, you’ll need to provide a link to the trade mark, its registration number, details of the jurisdiction in which it is registered, and the URL of the infringing content. If you don’t provide this information, or inadvertently miss something, your report will be dismissed or at least delayed, and the infringing content will remain online.
Many brand owners opt to instruct trade mark solicitors like ours to file takedown requests on their behalf. This ensures the information submitted is complete and accurate and gives the request the best chance of success. Since inaccurate takedown requests can amount to unjustified threats, getting it right is vital to avoid potentially severe legal consequences.
Facebook’s reporting system can be a useful tool in removing content in straightforward cases involving a third party using your brand name to sell identical goods or services. For anything more complex, though, the system has some distinct drawbacks. Facebook explicitly states that it won’t get involved in legal disputes or act on reports requiring an in-depth analysis of the issue. If you need to provide information over and above the trade mark registration number and link to the infringing activity to make out your case, Facebook’s trade mark reporting system might not be of much help.
Taking down an infringing post won’t effectively address the problem if the page or post in question is part of a wider campaign of infringement. While Facebook may permanently disable the account or remove the page or group of a user who repeatedly infringes third parties’ intellectual property, that user can simply open new accounts under different identities. In cases like these, you need to get to the heart of the problem, which might involve contacting the infringer directly and even taking legal action against them.
What is the Facebook brand right protection tool and how does it help me resolve trade mark disputes?
Facebook’s Brand Rights Protection tool is designed to assist brand owners with protecting their intellectual property on the site. It offers a streamlined process for identifying and reporting any instances of trade mark infringement.
To be eligible to use the Brand Rights Protection tool, you must:
- Have a personal Facebook account.
- Have a business portfolio in the Metal Business Suite.
- Own a registered trade mark.
- Not have a history of intellectual property infringement.
- Be an employee of the relevant brand or business.
Once you are a member, you can search for infringing content across Facebook and Instagram using a keyword, phrase, URL, ID, or image, and report any that you find.
Registering with the Brand Rights Protection tool offers several advantages, including:
- The tool simplifies the process of detecting and reporting trade mark infringements on Facebook; brand owners need merely upload material, such as logos, to the platform, and the system will scan content for anything that matches it.
- Brand owners can develop an ‘allow list’ of Facebook pages authorised to use their branding, reducing the number of irrelevant results.
- The tool automatically recommends pages, commerce listings, and ads for members to review, based on their previous reports, uploaded images, and allow lists.
- The tool allows cross-surface searching, so brand owners can simultaneously search for infringing content across several platform areas, such as ads, pages, groups, posts, and accounts.
- Brand owners can lodge automated reports instead of manually completing reporting forms each time.
- Brands with a proven track record of filing valid takedown requests may benefit from automatic takedowns when they file a request.
The tool is not a cure-all for trade mark infringement on Facebook, and it has several drawbacks. They include:
- The tool relies on AI to detect potential infringements, meaning that its searches can yield irrelevant results while missing actual infringing content.
- The tool can be tricky to navigate, and understanding how to get the most out of it takes time.
- As with all takedown requests, the outcome will be the removal of the infringing content and, potentially, the associated account. In cases of systematic trade mark infringement by the same individuals, additional measures may be required to address the root of the problem and prevent ongoing brand damage.
How can I resolve a trade mark infringement dispute on Facebook?
If the third party whose content Facebook removed following your report disagrees with the removal, they can appeal. If their appeal succeeds, Facebook will reinstate the content. You are then essentially embroiled in a dispute with the other party over the legitimacy of their content.
As explained above, Facebook is not the forum for resolving trade mark infringement disputes. If Facebook is confident that the content is infringing, it will usually remove it. If it isn’t, it will allow it to remain. While evidence of a registered trade mark is often enough to tip the balance in favour of the brand owner, the site states explicitly that it won’t get involved in disputes. If your takedown request does not resolve the issue, you may need to consider other options to end the infringement and protect your brand.
For a more general overview of this topic, read our trade mark infringement claim guide.
What are my options if they dispute my claim?
If the other party disputes your claim and Facebook reinstates the offending content, you’ll need to consider different ways to address the problem.
Depending on factors unique to the situation, such as the nature and extent of the infringement and its potential impact on your business, you might consider:
- Contacting the other party directly to alert them to your rights and demand that they stop their infringements immediately. You must tread carefully; any communications that are not legally sound may constitute unjustified threats and expose you to a risk of the other party issuing proceedings against you. You must also avoid saying anything that jeopardises your legal position.
- Taking legal advice. Specialist trade mark solicitors like ours will advise you on the merits of your position and your options. They’ll likely send a formal letter of claim to the other side, outlining your rights and their infringements, and demanding they cease their activities and pay you damages.
- Issuing court proceedings. If all else fails and the infringement is causing considerable harm to your business, our trade mark solicitors may suggest issuing infringement proceedings. Even once you’ve issued proceedings, settlement discussions will continue behind the scenes, and there’s every chance your claim will be settled to your satisfaction before trial.
How long does it take for Facebook to remove an infringing post?
There are no guarantees regarding how quickly Facebook will remove an infringing post, or even that they’ll remove it at all. In some cases, Facebook may remove the post within a few days if you’ve completed the form correctly and provided all relevant evidence. Given the size of the platform and the number of users, it’s perhaps unsurprising that some requests can take longer to process. If the other party disputes your assertions, Facebook may allow the content to remain on the site.
You should keep an eye on the post, and if it hasn’t been taken down within a few days, you should follow up on your takedown request. If Facebook still fails to take action, you should enlist the help of trade mark solicitors like ours to secure the removal and stem any ongoing brand damage.
What are your options if Facebook refuses to take action against the seller?
In these cases, several options might be available to you, including:
- You could contact the poster directly to notify them of your rights and inform them that you’ll consider legal action if they don’t cease their infringements.
- You could send a letter to Facebook, informing it that you’ll take legal action against the site if it doesn’t remove the content immediately. While Facebook isn’t generally liable for infringing content posted by others, its immunity can lapse if it’s made aware of an infringement and fails to act.
- You could issue infringement proceedings. Litigation should always be a last resort, but it may be unavoidable if the other party refuses to cease its infringements or Facebook refuses to remove content that’s causing irreparable brand damage.
Summary
Your registered trade marks are among your business’s most valuable assets, so it’s important that you protect them. The sheer size of Facebook’s reach means that any infringements on the site have the potential to cause considerable damage to your brand, from which your business may struggle to recover.
Facebook’s brand protection systems offer business owners a quick, convenient way to tackle infringements on the site, but they aren’t fail-safe. Businesses often become frustrated with the automated nature of the services and the lack of opportunity to engage with a human being to reiterate the severity of the situation and the need for immediate action. Taking down one infringing post can be a futile exercise in cases involving determined copycats who will simply repost infringing content under a different guise.
Our trade mark solicitors have vast experience in tackling trade mark infringements both on and offline and are ideally placed to assist you in addressing these issues. Their involvement will ensure any infringing content is removed from Facebook promptly and won’t be reposted. They’ll devise a strategy that protects your brand’s integrity, both on Facebook and elsewhere, safeguards your reputation in the market, and ensures your business’s ongoing success.
