29 January 2021
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Most readers will be familiar with Instagram, a global photo and video sharing social network which reportedly has over 1 billion monthly active users. Originally launched in 2010, the platform has become a vital marketing tool for many businesses, enabling them to create and share adverts, as well as grow and engage followers and keep them up to date with news about their brand.

Unfortunately, Instagram also presents brand owner with new challenges. Online infringement and misuse of IP is becoming increasingly common. On Instagram in particular, many brand owners may find their content being shared and copied without their consent, or even whole copycat accounts set up confusing consumers as to which is the authentic page for the brand.

Traditional methods of enforcement can be difficult on social media, where it is often unclear who the infringer is and where they are located. However, most social media sites have a process for reporting IP infringement. This blog post looks at the process for reporting trade mark infringement to Instagram, but it is also worth noting there is a separate process for reporting copyright infringement.

How do I report trade mark infringement on Instagram?

Instagram has guidance on their trade mark infringement reporting policy. They specifically state that “Instagram can’t adjudicate disputes between third parties” and that they “wouldn’t be in a position to act on trademark reports that require an in-depth trademark analysis or a real-world dispute outside of Instagram”.

As a consequence, reports are only likely to be successful where the infringement is clear and obvious; for more complex cases, you will need to consider other options.

The process for making the report begins by completing this form. You can use this to report a specific photo, video, caption, comment, username or ad, or even an entire account. Most of the content of the form is self-explanatory. It includes spaces for:

  • Contact details;
  • The name of the right holder;
  • A link to an example of the right holder’s online presence (a website, Facebook page, Instagram page etc.); and
  • The trade mark, registration number, goods/services and country of registration.

You can include a link to the trade mark on the register or upload a copy of the registration certificate, for example if the country concerned doesn’t have an online register. You can also add very brief details of up to five other trade mark registrations. There is then a box to add detailed explanation in support of your report.

What are the key challenges?

In our experience, there are two particular aspects of making the report which can often be challenging, namely proving you have rights in the relevant jurisdiction and in respect of relevant goods and services. Careful consideration should be given to these issues when submitting the infringement report.

In some instances, an infringer may see a brand which is popular in one territory and decide to copy it in their own. This might result in Instagram accounts being set up which

incorporate the brand name plus a country name or country code which implies the Instagram account is targeting a particular jurisdiction. If the brand owner has a trade mark registration in that jurisdiction, they can base the report on the relevant registration, seeking local attorney input on any specific wording they should use in support of their report. However, making the report will be more problematic if the brand owner does not have a trade mark registration in that jurisdiction and needs to rely on a registration in another country. Some carefully crafted wording about the global nature of Instagram and its users may assist, but Instagram seems to take a frustrating inconsistent approach to its decisions in such cases. We have seen reports accepted and refused in almost identical circumstances; it appears to be at the discretion of the person reviewing the report.

Another problem occurs when the infringer is not obviously using a mark in the context of goods and services. In such circumstances, there may be aspects of the account which can be used to draw inferences about the field of business involved, such as a descriptive word in an account name or in the account’s bio, or an image of a type of product uploaded by the account. However, a degree of creativity may be required. As with jurisdiction, the success of the report will vary depending on the attitude of the person reviewing the report.

What else should I consider?

Instagram’s trade mark reporting functions are focused on enforcement of registered trade marks, which is consistent with their desire to avoid making any in-depth analysis of infringement. Whilst unregistered trade marks can be enforced in some countries, there is a significant evidential burden and you would not be able to follow a quick and simple procedure like reporting an account to Instagram. This highlights the value of trade mark registrations in your arsenal against infringers.

Before making a report of trade mark infringement to Instagram, it is always advisable to consider the bigger picture. The Instagram page may be part of a wider infringement issue, involving the sale of goods or provision of services, and potentially other online platforms as well. If so, there may be other more appropriate ways of tackling the infringement, such as sending a cease and desist letter before commencing infringement proceedings in the jurisdiction concerned.

If you decide to proceed with your report, you will need to consider carefully which rights to rely on and the detailed explanation that will be given in support of the report, particularly if some of the challenges mentioned are relevant.

You should also bear in mind that Instagram regularly provides the right owner’s name and contact details to the person who posted the content being reported, and they may contact you to discuss the report. For this reason, you may wish to provide a generic business email address, or ask your attorney to submit the report on your behalf.

If you have any concerns about trade mark infringement on Instagram or other online platforms, you can reach out to your regular contact at Mewburn Ellis, or contact us here.

Rebecca is a Partner and Chartered Trade Mark Attorney at Mewburn Ellis. She handles all aspects of trade mark work, with a particular focus on managing large trade mark portfolios, devising international filing and enforcement strategies, and negotiating settlements in trade mark disputes. Rebecca has extensive experience of trade mark opposition, revocation and invalidity proceedings before the UK Intellectual Property Office (UKIPO), including very complex evidence based cases. Rebecca also has a strong track record in overcoming objections raised to trade mark applications.
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