Claiming rights to usernames such as for Facebook and Instagram accounts is not always a straight forward exercise. These companies operate and apply a set of different rules; however, there are international trademark rules they have to adhere to.
Claiming rights to usernames with Facebook
A Facebook username is a unique identifier that appears below the Facebook page name and in the Facebook page URL (also known as the domain name). Facebook provides that usernames are claimed on a first-come, first-served basis which means that even if you are the owner of a particular trade mark, if a username containing your trade mark, or something similar to your trade mark, has already been claimed by another Facebook user, you do not automatically have rights to reclaim that username. However, there are situations in which you may be able to claim a Facebook username such as after its removal for intellectual property infringement.
Facebook, in its terms of service (known as its Statement of Rights and Responsibilities) provides that if you select a username or similar identifier for your account or Page, we reserve the right to remove or reclaim it if we believe it is appropriate (such as when a trademark owner complains about a username that does not closely relate to a users actual name).â€ The difficulty lies in determining whether a complaint should be made to remove a Facebook username for trade mark infringement.
Merely claiming rights to usernames with Facebook does not necessarily constitute trade mark use necessary to meet the threshold for infringement. Facebook notes that while there may be cases where [use of trade marks in usernames] can be reported for trademark infringement [through Facebooks internal complaint mechanism] based on the context of its use not every use of your trademark in a username is necessarily a trademark infringement. The same word used in a different context may not violate your trademark.
The Trade Marks Act 1995 (Cth) s 120 provides that infringement occurs when:
- A sign is used as a trade mark to distinguish goods or services by one trader from the goods or services of other traders,
- Is substantially identical with, or deceptively similar to, another trade mark,
- The sign is applied to goods or services of the same description, or closely related to, the registered goods or services of the other trade mark, and
- Use of the sign is likely to deceive or cause confusion.
The relevant question therefore is whether the username has been used as a trade mark in the requisite context. If a Facebook username has been claimed for personal use, that is, used in ones personal profile and not for purposes related to trade, then it is unlikely that Facebook will remove the username for trade mark infringement. Use that is unlikely to deceive or cause confusion will not constitute trade mark infringement. On the other hand, if a Facebook username has been used in connection with the promotion or sale of goods or services in respect of which you have trade mark rights, so as to be likely to deceive or cause confusion, then it is more likely that Facebook will act to remove it for infringement. If it is removed, you will have the opportunity to claim the username.
Claiming rights to usernames with Instagram
Instagram usernames, like Facebook usernames, are claimed on a first-come, first-served basis. Therefore, trade mark owners generally do not have recourse to reclaim an Instagram username containing their trade mark, or something similar, unless the username is removed by Instagram, for example, for intellectual property infringement. Instagram considers trade mark violations to include using a company or business name, logo or other trademark-protected materials in a manner that may mislead or confuse others with regard to its brand or business affiliation. Instagram’s trademark policy will not be violated simply by using another’s trade mark in a way that has nothing to do with the product or service for which the trademark was granted. Therefore, the same rules that apply to Facebook usernames also apply to Instagram usernames.
The key difference, however, between Facebook usernames and Instagram usernames is that Facebook regards usernames which only differ by capitalisation and punctuation to be the same. For example, JohnSmith, johnsmith and John.Smith are regarded by Facebook as being the same username. On the other hand, Instagram allows users to claim available versions of a claimed username such as versions that differ in numbers and punctuation. For example, johnsmith, john_smith and john.smith are regarded by Instagram to be distinct and separate.
Although Instagram does provide more flexibility in terms of claiming usernames, it also exposes Instagram users to greater risk of trade mark infringement. Whilst use of punctuation is sufficient to distinguish usernames on Instagram, it may not be sufficient to alter the identity of the username so as to prevent a claim for trade mark infringement if use of an Instagram username is in the context of trade, in respect of similar, or closely related, goods or services as a registered trade mark, and the username is used in a manner that is likely to deceive or cause confusion.