Don’t use IP law as a hammer

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Don’t use IP law as a hammer

In-house trade mark counsel today discussed how visceral reactions to infringement or negative feedback on social media sites can backfire and quickly destroy brand loyalty

Tamara Reznick of Expedia cited the example of Nestlé’s response to a Greenpeace ad accusing the company of purchasing palm oil from companies that are destroying Indonesian rainforests. The campaign used a modified Kit Kat logo and posted negative tweets to the company’s Twitter site using the logo.

Nestlé immediately deleted the tweets and publicly threatened legal action. “They used IP law as a hammer,” said Reznick. “This angered consumers, who wanted to see the actual issue addressed.”

Customer pressure eventually resulted in Nestlé cutting ties with the palm oil companies.

Reznick said examples like this underscore the importance of in-house discussing appropriate tactics with their marketing departments ahead of time.

Reznick was speaking as part of a panel titled “Social Networking: Friend or Foe to Brand Owners” at the McCarthy Institute-Microsoft Trademark Symposium in New York City today. The Symposium’s theme was “Trademark Law and its Challenges”.

Mei-Lan Stark of Fox Entertainment Group said that “the best defence can be a good offence” when it comes to social media, which means constantly engaging users and refreshing content on a daily basis to create brand awareness and loyalty.

The sentiment that brands should tread carefully when using trade mark law as a solution to infringement online was echoed in a later session about ISP liability.

J Scott Evans of Yahoo! passionately told a panel comprising David Bernstein of Debevoise & Plimpton, Martin Schwimmer of Leason Ellis, Peter Becker of Microsoft and Brad Silver of Time Warner that the trade mark community should think twice before suing intermediaries such as Yahoo!

Yahoo! did not allow users to purchase trade marked keywords until February last year, when Microsoft changed its policy to align with Google. Microsoft’s search engine Bing powers Yahoo! Search. However, it still does not allow use of trade marks in ad text.

“We need to be careful as a community about going after and persecuting the one company who’s done the most for you,” said Evans.

more from across site and SHARED ros bottom lb

More from across our site

The UK-India trade deal doesn’t mention legal services, showing India has again failed to agree on a move that could help foreign firms and local practitioners
Eva-Maria Strobel reveals some of the firm’s IP achievements and its approach to client relationships
Lateral hires at Thompson Hine and Pierson Ferdinand said they were inspired by fresh business opportunities and innovative strategies at their new firms
The launch of a new IP insurance product and INTA hiring a former USPTO commissioner were also among the top talking points this week
The firm explains how it secured a $170.6 million verdict against the government in a patent dispute surrounding airport technology, and why the case led to interest from other inventors
Developments of note included the court partially allowing a claim concerning confidentiality clubs and a decision involving technology used in football matches
The firm said adding capability in the French capital completes its coverage of all major patent litigation jurisdictions as it strives for UPC excellence
Marc Fenster explains how keeping the jury focused on the most relevant facts helped secure a $279m win for his client against Samsung
Clients are divided on what externally funded IP firms bring to the table, so those firms must prove why the benefits outweigh the downsides
Rahul Bhartiya, AI coordinator at the EUIPO, discusses the office’s strategy, collaboration with other IP offices, and getting rid of routine tasks
Gift this article