Trademark protection lands Etsy seller in trouble with Procter & Gamble

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Ryan Ma's business operation is so small that he has been hand-addressing all the envelopes he bought at Wal-Mart to send his product to customers. But in the age of online commerce, it was still big enough to attract the ire of Procter & Gamble Co.

Mr. Ma had been noticing the criticism of Apple Inc.'s new wireless ear buds – called AirPods – which will likely be a growing product in the new year, as Apple's new phones come without a headphone jack. Among the criticisms were that the small, untethered buds would be easy to lose or steal, with some noting that their case looks like a packet of dental floss. Mr. Ma decided that making them actually look like dental floss might be a theft deterrent.

So on Sunday, he designed a sticker to place on the packet to do just that, and put it up for sale on Etsy. The idea quickly received coverage on news websites such as Gizmodo.com.

"It kind of blew up from there," he said.

The problem was that he had used real designs as his inspiration, and the sticker looked a lot like P&G's Oral-B brand of dental floss, called Glide. Mr. Ma's sticker listed "Oral O" and "Glides" as its brand names, and borrowed the blue-and-white colouring and font style of P&G's labels.

On Wednesday, Mr. Ma received a message from Etsy saying that his listing had been deactivated following a trademark infringement notice from "Procter & Gamble Business Services Canada Company."

"I freaked out a bit," Mr. Ma said. He revamped the sticker and renamed it "Flossy," and reposted the listing. (P&G did not reply to a request for comment.)

"I didn't think it would take off, it was just sort of a joke," Mr. Ma said, explaining that he had only ordered 250 stickers printed .

The case raises an interesting question about trademark protection. It does not actually matter that the purpose here was not to use the brand to undercut P&G and sell floss, or that Mr. Ma's fledgling business is tiny – the fact that the label was clearly based on P&G's design would be enough to raise concerns.

"This happens every day," said Eric Macramalla, a partner at Gowling WLG in Ottawa who focuses on intellectual property law. "If trademark owners don't protect their trademarks, then the strength of your trademark gets diluted … and ultimately, they may altogether lose the ability to effectively enforce their rights against other parties. So while big brand owners may be seen as the bad guy when they go after the little guy, it is important that they do so."