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IP experts say 'social enterprise' trademark attempt is possible

Finance | Vibeka Mair | 9 Aug 2012

Intellectual property legal experts say an attempt by global IT firm Salesforce to trademark ‘social enterprise’ is unlikely to be successful, but is possible.

As other trademarks with the term ‘social enterprise’ have been accepted, and Salesforce has applied for a European trademark; there is a possibility that its application will be accepted, a number of IP experts agree.

Last month, Salesforce, a large software and content management company, applied for three trademarks of the term ‘social enterprise’.

The move has been challenged by Social Enterprise UK, which has written directly to the company, expressing concern about the corporate’s use of the term ‘social enterprise’.

While the term ‘social enterprise’ broadly means a business with a social purpose for the civil society sector, Salesforce uses it to describe social media and technologies business strategies.

Salesforce has applied for three European trademarks of the term, covering areas from licensing of computers to printed material.

Peter Wienand, a partner at law firm Farrer, says it is unlikely that Saleforces’ applications will be accepted by a trademark examiner:

“The essential question the examiner will look at is if the term is sufficiently distinctive,” says Wienand. “On the face of it looks like it will be very difficult for Salesforce to show distinctive character.

“The term ‘social enterprise’ is so descriptive, it’s almost lifted from a dictionary. The trademark examiner will be very reluctant to give monopoly over the phrase.”

Alexandra Brodie, an IP specialist and partner at law firm Wragge & Co, agrees that it is unlikely Salesforces’ trademarks will be accepted: “The use of the word social enterprise has grown dramatically over the last decade. It’s part of the genuine language rather than an original identifying brand," she says.

But she adds that Salesforce has likely taken heart that others have registered ‘social enterprise’ as a term in a trademark.

Trademarks with the term ‘social enterprise’ include social enterprise bus – a trademark related to computer software and social enterprise trading for people and planet – a logo trademarked by the Social Enterprise Mark Company.

Kenneth Mullen, a partner and specialist in intellectual property (IP) at WithersWorldwide, warns that as the trademark examiner is likely to not be a native English speaker, they could be unfamiliar with the term ‘social enterprise’ in a UK-context.

“This may work in Salesforce’s favour,” he says.

Mullen adds that Salesforce has likely lodged three trademark applications as it knows it will be vulnerable to attack: “I suspect Salesforce has carefully thought through all the issues,” says Mullen.

Social Enterprise UK is taking legal advice, after unsuccessful attempts to engage in dialogue with Salesforce on the issue.

But, Ramsay Monine, a trainee solicitor at IP specialists Briffa, says he worries about whether Social Enterprise UK will be able to robustly challenge Salesforce:

“Social Enterprise UK does not own a trademark of the term ‘social enterprise’. It will therefore have to demonstrate that goodwill is associated with the company and the name which can be expensive and time-consuming.

“I hope the trademark examiner spots that Salesforce is a for-profit company and social enterprise is generally a non-profit term, so it’s deceptive for Salesforce to use that term.”

Salesforce was unavailable for comment.