Just as the digital world and social media platforms vie for our attention, businesses vie for attention in the digital world as a means to develop market share IRL (a.k.a.in real life). Digital technologies (i.e. social media, search engine optimization (SEO), etc.) appear ever-changing, and guidelines on proper use of IP need constant updating and adaptation. The international reach of these environments also often means that what may be okay in one jurisdiction may be offside in another. Proper use and avoiding misuse of trademarks and other intellectual property in these digital environments will therefore become a concern for many.
Canadian courts are now wrestling with where to draw the line with enforcing trademark rights in the modern digital world. They appear to be balancing legitimate commercial activities with those that infringe on others' trademark rights. Courts will look at the circumstances of all such use to determine when such use will be offside Canadian trademark law. To help navigate these waters, set out below are some practice tips for our clients.
Keyword Advertising and MetaData
Using a competitor's trademark as a keyword for driving traffic to your website is not automatically offside Canadian trademark law. In other words, merely bidding on trademarks in Google AdWords, for example, by itself, is not sufficient to cause confusion. How the search results are displayed and seen by the user, however, is a critical factor when considering when confusion will arise. As part of the "initial interest confusion" test, confusion will be assessed when the search engine results page is displayed or presented to the user.
If you are considering whether to use a competitor's trademark as a keyword to boost your SEO strategy, take care with the nature and content of the message that is conveyed to the user. To lessen the possibility of confusion, consider making it clear whose website is being offered up. Any attempt to blur the line between you and your competitor could give rise to liability.
With regard to metadata, Canadian courts have found that employing a competitor's trademark as metadata will not result in a likelihood of confusion where none of the trademarks would be visible anywhere on the website at issue, and where the website is clearly identified as not that of the competitor. In such cases, Canadian courts have found that the use of a competitor's trademark as metadata would not involve any "initial interest confusion" as there is no trademark use.
The use of hashtags is more like keyword advertising and is less like metadata; like traditional trademarks, they are visible to the consumer and clicking on them can direct the user to a specific content in which the hashtag appears. Unlike metatags, the hashtagging of a competitor's mark and/or trade names would be visible to users and could create a likelihood of confusion as to who is offering the goods and services, particularly if initial interest confusion is applied at the time of clicking on the hashtag or its search results. The Federal Court of Canada and other Canadian courts have provided little guidance on hashtags per se but when discussing metadata, these courts have not forestalled the possibility that the use of hashtags may constitute IP infringement.
It remains to be seen whether companies will seek trademark protection for hashtags on a regular basis, given the spontaneous and ephemeral nature of hashtags and their use. A number of hashtag themed trademarks have been registered in Canada; see, for example, #CLICK (TMA659,836); and #TRENDINGHOT (TMA907,635). Because of this, companies should consider when making use of hashtags whether those hashtags may be trademarks that belong to others. Full availability searches could be conducted if a company intends to use a word or phrase as both a hashtag and a TM as part of an ongoing (and hopefully) long running campaign. In such cases, businesses should consider, therefore, searching the applicable registry of trademarks (e.g., the Canadian Intellectual Property Office and the United States Patent and Trade-mark Office) for the word or phrase that they plan to use as a hashtag in association with any particular goods and services with which the word or phrase will be used.