Article by John Foster
An extensive INTA-led survey of more than two dozen jurisdictions in Africa, the Middle East, and South Asia shows that social media evidence is acceptable to at least some degree in trademark proceedings in all the countries.
The Middle East, Africa and South Asia (MEASA) Subcommittee Social Media Working Group, part of the Famous and Well-Known Marks Committee, undertook the survey of committee members last year. The aim was to better understand regional perspectives on submitting evidence of trademark use on social media for purposes of proving use, reputation, or that the mark is famous or well-known in proceedings before courts and other administrative tribunals.
Jurisdictions surveyed in the regions included the following: from the Middle East—Bahrain, Gaza, Iran, Jordan, Kuwait, Lebanon, Qatar, Saudi Arabia, the United Arab Emirates (UAE), the West Bank, and Yemen; from Africa—Algeria, Angola, Egypt, Ethiopia, Mauritius, Morocco, Nigeria, Oman, Rwanda, South Africa, Tanzania (Mainland), and Tunisia; and from South Asia—Pakistan, Singapore, and Sri Lanka.
The survey asked participants:
Is the use of a trademark on social media accepted as evidence in (a) responding to office actions; (b) trademark opposition or trademark administrative cancellation proceedings (before the Trademark Office); (c) trademark enforcement or trademark judicial cancellation proceedings; (d) all of the above.
According to the survey results, it appears that social media evidence is at least to some degree acceptable in all the jurisdictions surveyed. In the majority of jurisdictions, respondents said such evidence is accepted in all proceedings, whether in response to office actions or before the trademark office or courts. That said, there was wide variation in how the evidence should be submitted, how it is treated, and whether it is sufficient to prove use, establish reputation, or prove that the mark is famous or well-known.
For responses to office actions, Algeria, Angola, Iran, Lebanon, Mauritius, Pakistan, and the UAE are the only surveyed jurisdictions in which social media evidence would not be accepted. In Algeria and Lebanon, no trademark opposition or administrative cancellation proceedings are available. In Ethiopia and Iran, social media is not accepted in any proceedings, while in Angola, Ethiopia, Mauritius, and Pakistan social media evidence is not accepted in trademark enforcement or judicial cancellation proceedings.
The survey results provide valuable insight into the treatment of social media as evidence in trademark proceedings.
A series of future articles will look more in-depth at the treatment of social media evidence in the three regions and draw parallels among the jurisdictions. The analysis will consider how social media evidence can be used to prove use, establish reputation, and prove that a mark is famous or well-known, as well as the evidentiary standards or practices attached to social media evidence, and how social media metrics can be introduced as evidence in trademark proceedings.
Three members of the Famous and Well-Known Committee—MEASA Subcommittee acted as verifiers for this article: Lea El Feghali (Alyafi IP, Kuwait), Hady Khawand (Saba & Co IP, UAE), and Seema Mansoor (Vellani & Vellani, Pakistan).
Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.
This article was first published by the International Trademark Association (INTA).