Safeguarding brands online

ESSENESE OBHAN and TAARIKA PILLAI analyze online counterfeiting, intermediary liability rules

The spread of user-generated content and e-commerce platforms, combined with competition for website traffic demands new strategies to monitor the online use of trademarks by third parties.

Misleading comments and unfavourable forwarded messages that defame trademark owners and products are freely posted online with the owners having little control. In such situations, what is the role of intermediaries in trademark infringement and product disparagement?

Product disparagement and defamation: In 2013, Indian consumer goods company Parle sued Facebook, Twitter and Google for a post containing false statements that its popular drink Frooti was contaminated. The court granted interim relief to Parle by directing Google and Facebook to block the web addresses and the content in question.

But, where does one draw the line between a brand owner’s reputation and an intermediary’s policing woes?

One solution is to target the intermediary so that it can control content dissemination. First, a notice and takedown action can be issued, where the intermediary may not be liable upon compliance with the action. Second, the intermediary may be sued if it has knowingly and voluntarily published defamatory content. But suing intermediaries for promoting or publishing defamatory content, especially if they are hosting it unknowingly is impractical. Indeed, the Supreme Court has held that intermediaries cannot be sued merely on a complaint that they host offensive content.