Twitter accounts equated to domain names in trade mark action

I came across an interesting case in the United States on Evan Brown's Internet Cases blog which he also mentioned in a recent This Week in Law episode. The case is interesting because although the ruling appears to be provisional relief as part of a larger set of proceedings (I am not familiar with the court proceedings in that court), the court appears to have equated Twitter accounts with domain names in the context of trade marks.

Viewing a Twitter account as analogous to a domain name (or close to it) for the purposes of trade mark enforcement makes sense to the extent a domain name has similar significance for a trade mark owner although there are some fundamental differences between a Twitter account and a domain name. For one thing Twitter accounts are made available by a private company which theoretically controls these accounts and makes their use subject to its own terms and conditions. On the other hand domain names are typically available for registration with a number of registrars which essentially facilitate registration of a domain name and don't get involved with how the domain name is used.

A domain name is a commodity of sorts. Where a person registers a domain name and uses it to infringe another party's rights, the domain name can be transferred to a stronger rights holder following a dispute resolution process. When it comes to .za domain names, the .za Domain Name Authority has jurisdiction to hear certain disputes and can rule that a domain be transferred to a complainant where a complainant's rights are infringed by the domain name holder. When we talk about domain name registrations we talk in terms of domain names being owned by registrants but this sort of talk probably won't be applicable to Twitter accounts.

Twitter's terms of service contemplate Twitter retaining proprietary rights over its service and this could conflict with this notion of a Twitter user's account forming part of its/his/her trade mark or being considered a protectable extension of a trade mark:

All right, title, and interest in and to the Services (excluding Content provided by users) are and will remain the exclusive property of Twitter and its licensors. The Services are protected by copyright, trademark, and other laws of both the United States and foreign countries. Nothing in the Terms gives you a right to use the Twitter name or any of the Twitter trademarks, logos, domain names, and other distinctive brand features. Any feedback, comments, or suggestions you may provide regarding Twitter, or the Services is entirely voluntary and we will be free to use such feedback, comments or suggestions as we see fit and without any obligation to you.

While there is little doubt a Twitter account has value for a brand and trade mark holder, it will be interesting to see how a court handles a case in which a trade mark owner seeks some sort of protection for its trade mark via Twitter. The idea isn't novel, brandsquatting has been an issue for sometime now but when it comes to addressing this type of attack on trade marks, the matter is usually addressed with Twitter itself in terms of its Trademark Policy. This places the dispute squarely in Twitter's hands and if the complaint has merit in Twitter's view, it will make an appropriate determination and act accordingly. When it comes to domain names, the bodies handling disputes tend to be established by law or some sort of governmental process and operate on a quasi-judicial basis having regard to applicable law.

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Photo credit: Ev and Biz introduce new Twitter design to world's tech press by Robert Scoble, licensed CC BY 2.0

A quick note about the Cell C rebranding and ™

The Cell C rebranding has sparked a furious debate about the merits of the new logo as well as Cell C's campaign involving Trevor Noah. In critiquing the new logo a number of people, myself included for some inexplicable reason, confused the significance of the ™ symbol with the ® symbol and have referred to the Cell C logo as being a registered trade mark. This is not accurate and this was borne out by news that the Cell C logo's registration has been provisionally refused.

It is worth exploring what a trade mark is and what the distinction is between these two symbols. A trade mark is a mark used in relation to goods or services which distinguishes those goods and services from those sold or rendered by any other person. This is one of the reasons why a trade mark that is confusingly similar to another trade mark is often a trade mark infringement. Trade marks need to be distinctive to be effective although trade marks are also registered in different classes. This could mean that the same or a similar trade mark can be used for goods or services in very different industries or classifications.

Trade marks need not be registered and this is where the confusion came in with this story. The ™ symbol indicates that a particular mark is being used as a trade mark. It doesn't mean that the trade mark has the protections afforded to registered trade marks which use the symbol ® to indicate registration.

What Cell C is doing is using an unregistered trade mark pending its application to register its trade mark. If registered, it will likely then apply the ® symbol to its logo. Cell C still faces a number of challenges to its trade mark's registration including the grounds I mentioned in my previous post as well as provisions of the Trade Mark Regulations which specifically refer to the use of the © symbol as a basis of refusal of the application.

It isn't surprising that Cell C is fighting for its new branding. It has reportedly spent a fortune rebranding its stores and, in all likelihood, paying its designers and lawyers too. It is a substantial investment which can't simply be discarded and while its logo design choice may be questionable, it seems to be stuck with it for now unless its registration is rejected completely. In that case Cell C will have to decide whether to use its new trade mark as an unregistered trade mark and make the most of its investment or change its branding and try again.

Cell C and its new logo: trade marks and copyright

Cell C recently revealed its new logo at a press conference in Johannesburg. According to its press release:

At a press conference in Johannesburg yesterday, Cell C which for the past nine years has been associated with a red logo and spotted “C”, revealed a refreshing new black and white logo with the “C” in the latter part of Cell C, placed within a solid circle.

The new corporate identity, according to Cell C CEO, Lars P Reichelt, reflects the company’s vision of understanding its customers’ way of life better than anybody else and tailoring solutions around them to enhance lifestyles and improve livelihoods.

The new brand identity also consists of a six-colour bar which represents the colours of the South African flag as a symbol that Cell C cares about South Africa, and South Africa only. Cell C intends to cater to all customers and not just those within specific LSMs.

Looking at the new logo you would be forgiven for being a little confused. The circled "C" bears an uncanny resemblance to the symbol we have become pretty familiar with for another reason. That symbol, depicted below, is the universal symbol for copyright:

The Cell C logo appears to be a registered is being used as a trade mark and its choice to include the copyright logo could have some interesting consequences for the trade mark itself. While I don't profess to be an expert in trade marks, using such a well known symbol in its logo may open the door to challenges to the trade mark's registration where reliance is placed on the circled "C" itself on a couple grounds including:

• Cell C has no claim to own the circled "C" symbol;
• the circled "C" symbol is a well known symbol internationally in a very different context;
• the circled "C" symbol is already in widespread use in South Africa, including by Cell C's own competitors, in copyright notices; or
• the symbol may even cause confusion to a degree.

The new logo, as a whole, may be registrable as a trade mark but the prevalence of the copyright symbol may have the effect of diluting the trade mark to the point where it has far less value as a trade mark than if Cell C came up with an original logo that didn't incorporate such a well known symbol.

Another problem with the new logo is that Cell C's competitors may immediately be infringing the trade mark where their copyright notices are prominent relative to their promotional materials on their websites and elsewhere. MTN and Vodacom have copyright notices with the copyright symbol on their websites and have done so for some time now:

and

Cell C has probably opened itself up to a number of challenges both to its trade mark registration and to the brand itself largely due to its decision to use this well known symbol.

Another concern is the impact this logo choice may have on general awareness of the copyright symbol and its meaning generally speaking. The new Cell C logo dilutes the value of the copyright symbol as a distinctive symbol for copyright and content protection generally, particularly where there is relatively little understanding on the value of respecting copyright and content owners' rights. This may seem like a fairly abstract concern but I have found that while most people I speak to when I present on copyright issues recognise the copyright symbol, many people have an appreciation for what that symbol stands for and Cell C's decision to incorporate this symbol could only hamper copyright education efforts despite creating a very interesting case study in trade mark selection and registration.

Update: I was taking another look at the Cell C website and noticed this representation of the logo at the bottom of the page:

This representation suggests that Cell C regards the circled "C" as a prominent feature of its trade mark and it even suggests that Cell C has trademarked the copyright symbol itself. This seems to be somewhat reckless and invites a challenge in some form or another. That challenge may not be a legal challenge, at least not initially, but it would well be a reputational or brand-related challenge down the line.

On that note be sure to read Mandy de Waal's article about Cell C's campaign featuring Trevor Noah. There are a growing number of questions being asked about the campaign itself.

Update 2: Cell C just doesn't seem to be getting a break with its logo choice. I just noticed an article in BizCommunity about the similarities between the Cell C logo and Athletics South Africa's logo. These similarities may not affect Cell C's ability to register its logo as a trade mark if the trade marks are registered in different classes but the resemblance is striking.