Can a trademark be challenged? Yes, there are a number of ways of disputing a pending or registered trademark – competitors do it to each other all the time.

In this article we explore the challenges of using social media evidence when trying to prove use of a trademark. Remember that "use" in this context has a special meaning: it must display of the mark for trademark purposes.

We will examine two recent cases where trademarks were challenged, and social media posts were used as evidence of "use."

Instagram Posts for Beer Brand

The case of Lost Craft Inc. v 101217990 Saskatchewan Ltd. dba Direct Brewing Company dealt with a dispute over competing claims for the mark FIND YOUR CRAFT. In September 2016, District Brewing Company (the Applicant) applied to register the trademark FIND YOUR CRAFT in association with "beer". Competing brewery Lost Craft Inc. alleged prior use of the identical trademark FIND YOUR CRAFT with identical goods. Lost Craft also filed their own application for the same trademark FIND YOUR CRAFT, which was filed after the first application, claiming an earlier date of "first use" in Canada.

Lost Craft showed it's past Instagram posts as evidence of their use of the mark. The trademark was in the form of a hashtag. For a hashtag to prove "use" for trademark purposes, the hashtag must function as a trademark. In this case the tag "#findyourcraft", as it appeared in the social media post, was not good evidence of "use" as it did not function any differently than any of the other hashtags in the text (such as #torontobeer or #comingsoon). The term FIND YOUR CRAFT did not appear in the Instagram post or on beer labels or packaging, and it wasn’t set apart or given special prominence as a brand, so it was treated solely as a mere hashtag, rather than a brand.

In this case, the social media post failed to establish trademark use in association with beer, since "the post does not demonstrate that #findyourcraft is marked on the Opponent’s beer packaging or is in some other way associated with the goods such that the requisite notice of association at the time of transfer is made."

The takeaway? A hashtag alone, jumbled in with a list of other hashtags, might not be enough to show "use" for these purposes. While Lost Craft ultimately prevailed, the win wasn’t based on its social media posts. The case was decided on different grounds, but this shows some of the challenges of relying on Instagram posts when put to the test of proving "use" for trademark purposes.

LinkedIn Posts for IT Services

In BDP LLP v Jainoor (JJ) S. Mumick dba Ignite Technologies the trademark owner was the target of a Section 45 challenge. This is a challenge designed to cancel a registered trademark if the owner can't prove "use" of the trademark within a certain period of time. If the trademark hasn’t been "used" for trademark purposes, then the mark is considered to have been abandoned and the registration is cancelled.

In this case, the trademark owner relied on his LinkedIn page to show use. The services of Ignite Technologies were advertised on the owner's personal LinkedIn page, which displayed the trademarks. This was accepted as convincing evidence of use of these marks for information technology services, even though there was no evidence about the number of views of this page, or whether the LinkedIn page was accessed at all. It's worth noting that advertisement of services in association with a trademark is sufficient to establish use of that trademark for the purposes of the Trademarks Act, where an owner offers and is willing and able to perform the services in Canada. The outcome may have been different if the trademark was registered in association with goods (as opposed to services). Also, the outcome may have been different outside a Section 45 case: the evidence in a section 45 proceeding need not be perfect; a registered owner need only establish an initial case of use which is a relatively light burden of proof. The evidence only needs to supply facts from which a conclusion of use may follow as a logical inference. Here, trademark "use" could be inferred from the display on the LinkedIn page, and the trademark owner survived the Section 45 challenge.

The takeaway? Seek advice on guidelines for appropriate use and display of trademarks on social media, to make sure it will serve you well if you ever face a trademark challenge.

These two cases illustrate some of the opportunities and challenges of using social media evidence in trademark cases. If you need assistance with trademark applications, protecting your trademarks, surviving a Section 45 challenge, or initiating such a challenge, contact Richard Stobbe or any member of our Intellectual Property + Technology Group.