As more and more businesses make use of the internet and the global market that it provides, more issues start to become apparent, particularly relating to intellectual property infringement in differing jurisdictions.
What is ‘Targeting’?
Targeting, or targeted marketing, refers to the use of adverts which are targeted directly towards a particular audience. This can be based on a number of factors, most commonly age, gender or geographical location. It is an increasingly common marketing technique, particularly as more companies focus their efforts towards online retail opportunities.
Such forms of digital marketing can provide the scope for a small business to reach a vast new audience which they would otherwise not reach. However, the ease of it doing it often belies the issues which can ensue.
The issue with ‘Targeting’
Intellectual property shown in an advert is considered “use”, therefore it all comes down to the territorial scope of the advert that is being promoted.
If a UK based company is marketing solely within the UK, it is unlikely to raise any issues. However, if the same UK based company is marketing to consumers in the USA, for example, then suddenly that advert will be subjected to the laws of that jurisdiction. The implications of which being that everything within that advert will fall to be scrutinised under USA marketing regulations, but there could very well be further issues with regards to the intellectual property contained within the ad, or with the company brand itself.
An advert shown in the USA containing a logo which may be registered in the UK, or even the EU, that infringes on a mark which is registered in the USA will be subject to the laws under that jurisdiction. Therefore it will not have a valid registration in the USA, which means there will be no defence to trade mark infringement. This is also true of copyright and designs.
Very few small businesses will have their intellectual property protected across multiple territories, even fewer small businesses will have it protected world wide. Yet they will often opt to market through Google Ads, or similar internet services and, unfortunately the internet, or the ‘world wide web’, is exactly that. This leaves them exposed to issues surrounding targeting.
How to avoid the issues
The important thing to note about targeted marketing is the precedent set down by both the market regulators and the courts which dictates that, when assessing an advert it will be viewed objectively. Therefore, regardless of what was intended of the advert, if it has the appearance of targeting, it will be deemed to have been targeted.
The most comprehensive way of protecting against infringement allegations as a consequence of targeting would be to protect your IP in totality, around the world in combination with pre-use clearance searches. The cost of such action is unlikely to suggest this as being the most practical option; however it does provide reliable security against the prospect of foreign action.
When engaging in online advertising it is possible to choose the target audience, generally by location. The safest option is to only advertise in the territories where any intellectual property is registered.
Commercially, this may not be the most viable option as companies look to grow by exploiting the world wide market to which they have access to through the internet. Alternatively, in order to avoid any assumption that an advert is targeted in another country, it is good practice to ensure any prices included are stated in the currency relevant to the areas in which the IP is registered; for example in the EU the ad would be in Euros.
There are other tips for avoiding the possibility of any action in foreign jurisdiction, some more obvious than others. This could include stating on the advert where the advert is intended to be targeted, ensuring it is in the language of origin as opposed to that is used in the country advertised in which the advert will appear.
More drastic measures can be taken to skirt the risk of action being taken as a consequence of targeted marketing, such as blocking any transactional aspects connected with the website for certain territories.
Lessons to learn
Targeted marketing can, very easily and without notice, lead to a company infringing on another’s intellectual property. It may not be intentional but, unfortunately, the objective stance taken by the authorities’ means intention does not factor in to the equation.
Defending infringement claims in other jurisdictions, needing to instruct local legal agents for example, can prove very expensive. It helps to be cautious in such situations, therefore it is important to be aware of what rights you have over your branding and, importantly, how and where they are currently being used.
If you have any questions regarding targeted marketing or would like advice on using your intellectual property in online advertising, please do not hesitate to contact our IP/IT team on 01392 210700 or email ip.it@stephens-scown.co.uk.