Can a company post negative comments about a brand on Social Networks?
The object of this article, originally published in the magazine the LEX MERCATORIA, is to briefly discuss the legal situation in which they find themselves the owners of trademarks protected in the event of attacks on social networks to their markings that affect your reputation and image, and discuss possible avenues of protection against such behaviors.
In the era of the internet and the rapid development of social networks, are becoming more frequent and numerous cases that come to our office and the courts in which the owners of brands is attacked on social media by other people who can be individuals or, above all, what matters for the purposes of this article, companies that can compete in the same sector. In effect, with the amplitude and mass broadcast that allow social networks, it might be tempting for a brand lesser known use, in the manner of comparative advertising, the name of a registered mark, most known in the sector, to generate publicity in networks, influence potential consumers, and, to take advantage of the brand known and, in turn, be distinguished from it by getting at the same level.
Getting more into the matter, one might ask whether, under the protection of the freedom of expression or of a pseudo-promotional activity, on the internet, everything is worth, and what are the limits and possible mechanisms of protection open to the holders of trademarks.
Limits of the legality of the comments made on Social media about a brand protected
‘One’s freedom ends when it starts the other,’
Rousseau, J. J., The social contract, 1762
In the area of trademarks, the freedom of expression of potential competitors in the sector of a protected mark is limited to the protection conferred by the registration of a trademark, the loyalty of the practice and to the honor of the interested party.
This protection is provided, in the first place, in positive law in the law of trademarks, in particular, in the Spanish law of trademarks and also in the community regulation of trade marks in the european union, as the title registered.
Reasoning, in general terms, about the limits to the lawfulness of negative comments against a protected trademark in networks by competitors, it seems clear that not all promotional activity is legal or any comment, is also, therefore, according to comments, mostly negative, it could harm one of the functions essence – I of the mark, that is, the function condensing of its prestige. It is on this prestige, created through effort and work, that is the economic valuation of the brand. The protection of the mark by its owner an obligation to protect the value of your company. Renowned brands such as for example Zara or Louis Vuitton are not worth what they are worth in the market if it were not for the effort made to protect this intangible asset. Especially in the fashion sector, the world of the fashion law, is one of the most susceptible to attacks of this type.
A first limit is found in the rules of brands in article 9.2 of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trademark (hereinafter referred to as the “RMUE”), which provides: “Without prejudice to the rights of the owners purchased prior to the date of filing of the application or the priority date of the trademark of the Union, the holder shall be entitled to prohibit any third party, without your consent, the use in the course of trade any sign in relation to goods or services when: (c) the sign is identical or similar to the trademark of the Union, regardless of whether it is used in connection with products or services which are identical or whether or not similar to those for which the mark of the Union is registered, if this has a reputation in the Union and if the use without due cause of the sign you get a unfair advantage of the distinctive character or the repute of the mark of the Union or is detrimental to that distinctive character or reputation”.
The european case law of the Court of Justice of the European Union and has had the opportunity to remember this setting as limit the use according to fair practices in the sense of article 6.1 (c) of directive 89/104 (among which we can mention the STJUE, march 17, 2005 C-228/03) and has also been affirmed by the court of community trade marks of Alicante, among others, Judgment of the Jdo. Commercial Alicante/Alacant no. 1, S 03-09-2016, no. 183/2016, rec. 184/2015, no. cars 184/2015).
A second limit we might find it in the law of unfair competition since the Defence Act of Unfair Competition (“LCD”) prohibits certain acts which are considered to be unfair made by competitors such as acts of denigration (art. 9 LCD), acts of exploitation of the reputation of another (art. 12 LCD) and acts of comparison with illegal advertising (art. 10 LCD).
Turning to the case law can be found very frequent in the field of marks where a brand is accusing the other of copying publicly. The copies are a reality in practice that it is worth fighting, and against which the holders of trademarks protected should be alert and vigilant. In case law, we can find cases like that on the part of competitors have been pouring negative comments about the brand of a competitor by giving to understand the market in which the products of the competition would be, for example, copies of the products of the diffuser of the message, (SAP Alicante, sec. 8, S 28 – 01-2011, nº34/2011, rec. 620/2010).
We can also cite cases such as very well-known of IMPLANDENT of which met the Provincial court of Barcelona in its Judgment of 27 may 2005, no.. 257/2005 whose foundation 5, he said: ““ […] In effect; with regard to the former, the use of the term “copies” to refer to the products of IMPLANDENT, causes the recipient to the perception that the parts manufactured by the plaintiff are copies of the parts manufactured by KLOCKNER, all the more so if one takes into account that he then makes reference to “our parts” (with our parts), thus suggesting the element of comparison that in any case, precisely what qualifies as copy, all this in a context of confrontation between the two companies is motivated by the suspicion, and then denunciation of the copy of the system patented by KLOCKNER.
That information, qualified by the term copy to refer to the product of the others, and that determines the recipient of the text, the perception that the parts manufactured by the plaintiff, are a copy of the parts of KLOCKNER, implies in terms of competitiveness, the imputation or attribution to the product outside of a note desmerecedora in terms accuses a lack of originality and, therefore, singularity competitive, in contrast to the product that is presented as an original, and which gives meaning to the use of the term copy (all copy must be of an original).
Another third limit what we would find in the protection of the fundamental right to the honour laid down in article 18 of the Spanish Constitution. This fundamental right to the honor recognizes individuals and long since, in principle, also to legal persons.
Protection for brands targeted in Social Networks
There are various means of protection in case of an attack to the brand in social networks. These protective pathways is made through the filing of a lawsuit against the offender and their articulation by the way of the protection of trade marks and unfair competition, or, in his case, by way of protection of the right to honour. Our courts have known of similar cases across statements made in more traditional media and are, increasingly, to know of cases where such comments are made on social networks.
Each of these actions responds to specific criteria that must be fulfilled for its success and requires significant work in the background for the preparation of the action and its defense. Moreover, due to the complexity of proof that social media can present.
With these actions, the owner of the mark may, in particular, to get a judge to prohibit and condemn the infringer to cease the unlawful use by the offender of his brand, that such offender to be sentenced to pay compensation for the damage suffered which can be very important depending on the case, and, furthermore, what can be more relevant, which oblige the offender to publish the judgment that condemns him in various media for some time.
Especially relevant due to the reputational harm that can generate this type of cases, it is the compensation, and the publication of the sentence in the media.
On compensation, the first thing is to be measured, which is not always easy. Can be ordered as a general rule, damages for consequential damage, loss of profit and also for moral damages. Maybe the concept more controversial than the last. Discussed in case law, if the brand was the holder of an action in moral damages and the response of our courts has been in the affirmative, among which we can, in particular, to cite a recent judgment of the Supreme Court (STS, 2nd of 13 July 2023 no. rec. 5315/2021), which recognizes companies CHANEL SAS and BIMBA & LOLA, the right to be compensated in moral damages for the reputational harm caused, affected the reputation of protected brands that engage, directly or indirectly, the intangible elements of exclusivity and a commitment to quality that the marks are intended to convey to the consumers as a whole.
On the publication, this is due to the need to repair the damage and to inform the market that has been able to be influenced by such a behavior is not set to the right. The publication can be at the same time essential to the brand that has suffered such attacks and at the same time of great danger to the offender that will be condemned to it. In industries where the business is based on the value of intangibles such decisions are fundamental to strengthen the brand image.
Conclusions
In case of an attack by a company of the sector in social networks against a brand, it is advisable, first of all, analyze the case and analyze the various options offered. It is not recommended to tolerate attacks of this kind since it could create precedents and lose their rights to claim in the future and, all this, in spite of the cumbersome as it may seem to the owner of the company to start a lengthy court proceedings.
Bibliography
- ROUSSEAU, J. J., The social contract, 1762. Regulation (EU) 2017/1001 of the Parliament
- Parliament and of the Council of 14 June 2017 on the European Union trademark.
- Law 3/1991, January 10, from Unfair Competition.
- Spanish Constitution.
- Judgment of Court of Justice of the European Union, of 17 march 2005, C-228/03.
- Judgment of the Supreme Court, July 13, 2023.
- Sentence Commercial Court of Alicante, September 3, 2016, no. 183/2016.
- Sentence, Provincial court of Alicante, January 28, 2011, no. 34/2011.
- Sentence, Provincial court of Barcelona, may 27, 2005, no. 257/2005.