The use of trademarks in social media (social network, blogs, file sharing sites etc.) is becoming more and more important both with the use of trademarks by the owner and the use of trademarks by unauthorized third parties.
With regard to the protection of the trademarks, high profile of interest is certainly the question if social media graphical user interfaces (Facebook vs StudiVZ in Germany) can be protected as a trademark.
There can be relevant issues concerning the use of brands in promotion and advertising, especially considering that the use is not limited to a territory but it is global.
On the other hand, social networks may be an excellent opportunity to show and promote your own brands but may also increase the risk of counterfeiting and other infringements. Therefore, the use of third party trademarks in a fan page context or as URL or Groups’ name often offer new cases to the interpreter, whereby it’s not always easy to find the correct solution.
In a recent ruling, the Court of Turin held that a Group name on Facebook constituted counterfeiting of another’s similar trademark. As stated in the decision, a former employee of the company owner of the trademark and who was the “administrator” of the Group, upon termination of his cooperation, changed the name of the Group to another similar, removing the other administrators and redirecting the participants to a competitor’s website.
The Court recognized that a Group on Facebook could have economic relevance, where it is connected to a commercial enterprise, evaluating that friends on Facebook can be a treasure of qualified potentially productive goodwill.
The defendant claimed that he had acted in compliance with Facebook rules about creation and change of Groups name but the Court replied that this was a groundless allegation, because it is not possible to consider the internal rules of Facebook as a sort of lex specialis that can assign rights on distinctive signs, ignoring the supremacy of state laws, including those for the protection of distinctive signs.
In other words, there is no Facebook law that can go beyond the provisions of the Italian law on counterfeiting, trademark and unfair competition.
