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CLASS 46


Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

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WEDNESDAY, 14 SEPTEMBER 2011
Reality Check: MARQUES conference Part 2
Session 2, chaired by Virginia Taylor (Kilpatrick Townsend & Stockton LLP), carried the monstrously long but helpfully descriptive subtitle "Trade marks in social networking media / Facebook / From e-commerce to m-commerce / Trademarks in evolving business models (practical and prudential issues in policing and enforcement in internet and mobile media)". 

First to speak was Vanni Volpi (Guccio Gucci S.p.A, Italy). Vanni spoke about the all-embracing nature of the social media, as a means of marketing, selling and protecting Gucci brands.  It was therefore as important to have a strategy for the virtual world just as a strategy was needed for the real world. Gucci was now celebrating its 90th anniversary but continues to take new initiatives in promoting the brand's DNA through linking its new collections, events etc to its history. The company also seeks to use the social media for more interaction with its brand.

Gucci has been active in the development of its app, in order to enhance accessibility to consumers, and has been rated sixth best brand in terms of how it uses the social media. On the dark side, however, whatever brand owners can do with the social media, counterfeiters and criminals can do too.  Mirror websites are particularly problematic since they are credible, have a low level of risk and never handle the counterfeit goods themselves.  Products sold by such sites travel in small packages that are hard to detect. In terms of social networks, Facebook now has 800 million users, half of whom connect daily, Facebook has become a powerful means of promoting brands, selling products and even directing shoppers to bricks-and-mortar stores. Gucci has noted how much phishing and unsavoury content can be found in this medium -- something that not just brand owners but consumers have to watch out for.  The Chinese market must be carefully monitored too, since it is a large and active one in which activity is often hard to follow.

Gabrielle Olsson Skalin (Inter IKEA Holding Services A.A) spoke next. She outlined the basics of her company's bricks-and-mortar presence in terms of minimum size of stores and number of product lines offered. The company's use of IP is governed by in-house marketing manuals which have updated to incorporate the flexible and interactive nature of use of brands in the social media. 

IKEA seeks to establish "naming conventions", for example requiring "/IKEA" or "/IKEA+countryname" at the end of Facebook pages. The company's own employees, franchisees and third parties -- who may or may not be infringing -- all make use of IKEA one way or another, and it's important to respect the values of freedom of speech.  It's also important to make sure that individuals make it plain that their social media communications are expressions of their own opinions, not those of the company. Gabrielle also referred us to uses of the IKEA name and brand made by third parties, of which "Mark Lives in IKEA" was the most fascinating example (you can view "Mark Lives in IKEA" on YouTube here). 

In the context of third party use, fan sites were also mentioned, Gabrielle reiterating that a fan site that is run by the company is not a true fan site. 

Lisa Pearson (from Kilpatrick Townsend & Stockton LLP's Italy office), spoke next, filling in for another speaker at short notice. Quoting Douglas Adams' dictum that anything created after one reaches the age of 35 is against the natural order of things, she hoped that the audience would all leave the conference a little younger than they arrived, with a more accepting attitude to the social media. She gave some facts and figures about take-up of the social media, starting with Starbucks' 24 million Facebook friends and Betty Crocker's promotion of recipes using the company's products via the same media.

Collaboration through crowdsourcing was mentioned for its importance, as was the value of Wikipedia -- which should be monitored at least for genericity checks. This will only happen if companies have a broad social media policy that goes even as far as YouTube posts (click here for further information).  Adding that "you should put out social media fires with social media water", Lisa added that the best cure for unwanted speech in the social media may be more speech. Lisa also drew attention to TED, "the thinking person's social media site".

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MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.


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