A well-regarded and recognizable brand can often be a business’ most valuable asset. Relying on trademark law, businesses strive to protect their brands from use by others. Social media has created both an effective marketing platform as well as an easy opportunity to piggy-back off of the success of an established brand and/or social media presence. This article discusses when content posted on social media may infringe trademark rights and a social-media-specific enforcement mechanism.
Content posted on social media (e.g. photos, profile pictures, account usernames, etc.) may infringe on Canadian trademark rights if the posted content leads to consumer “confusion” as to the origin of any goods or services advertised in the post , provided that such goods or services are actually sold or provided to Canadians. In other words, if a consumer is “confused” as to whether posted content is associated with a trademark right owner and the technical elements of trademark infringement are present, the social media poster may advertently or inadvertently infringe those trademark rights. A body of Canadian case law has developed holding that whether a consumer would be “confused”, or not, is to be assessed as a matter of first impression in the mind of a casual consumer who is somewhat in a hurry who has no more than an imperfect recollection of a business’ trademark and who does not pause to give the matter any detailed consideration or scrutiny, nor to conduct a close examination of similarities and differences between trademarks . Several factors are considered in this analysis .
For example, the use of a hashtag (i.e. a word or phrase preceded by the ‘#’ symbol that is used to classify or categorize posted content) may infringe Canadian trademark rights if confusion is likely. A hashtag is regularly visible when its corresponding posted content is accessed. If posted content corresponding to the hashtag “confuses” a consumer as to the origin of goods and/or services associated with the posted content, trademark rights may arguably be infringed. For example, a business posting a picture marketing athletic wear with the hashtag #justdoit arguably may “confuse” a consumer into thinking that the athletic wear advertised in the social media post originates from Nike, the owner of the JUST DO IT trademark slogan.
Where trademark rights are suspected to be infringed, the question arises as to how to stop such infringement.
Commencing court proceedings against an individual or business is always an option. However, court proceedings are inherently costly, time intensive and outcomes are unpredictable. In contrast, many social media platforms (e.g. Instagram, Facebook, Twitter, etc.) provide online forms through which alleged trademark infringement may be reported. For example, posted content may be reported to Instagram here, to Facebook here and to Twitter here.
Generally, the owner of trademark rights registered by a recognized intellectual property office, or a representative of the owner (e.g. a law firm acting on behalf of the owner), may report the posted content. A report generally must include proof of the owner’s trademark registration as well as evidence showing the allegedly infringing content. Upon submission, the report is reviewed by the social media platform and any action deemed appropriate by the social media platform is taken. Actions deemed appropriate may include removal of reported content, disablement of an account or the like. In some limited circumstances, a person whose content was removed may have a right of appeal.
Advantageously, a report resulting in the removal of posted content or an entire account can provide a prompt, effective and inexpensive remedy for an infringement of trademark rights. Further, in view of the present-day prevalence of social media, loss of social media content and/or the inability to post new content may significantly impair an infringer’s ability to market and/or carry on their business. Since a trademark registration is required by most social media platforms to prove ownership in a trademark, businesses with online presence should consider registering their marks in countries where infringement may be an issue.
Despite a desire to halt any potential infringement of trademark rights as early as possible, reporting suspected infringement to social media platforms is a serious matter. In many cases, a declaration (i.e. a solemn statement) must be submitted with any report declaring that the report has been made with a good faith belief that any reported content does in fact infringe trademark rights. Accordingly, before any action is taken, legal advice on whether trademark rights have in fact been infringed is recommended. This is particularly so in Canada, where there are technical requirements that must be met to establish trademark infringement, including that there be “use” of the trademark as that term is defined in Canadian law.
References: Trade-marks Act, RSC 1985, c T-13 at s. 20(1)(a) [Trade-marks Act].  Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée,  1 SCR 824, 2006 SCC 23 at para. 20.  Under subsection 6(5) of the Trade-marks Act, the following factors are to be considered in a “confusion” analysis:
a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known;
b) the length of time the trade-marks or trade-names have been in use;
c) the nature of the goods, services or business;
d) the nature of the trade; and
e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them.