A #hashtag is a form of metadata containing a keyword or phrase prefixed with the # symbol. By placing a #hashtag followed by a word or phrase on a social media, such as Instagram or Meta, it turns the word or phrase into a hyperlink directing the consumers to other related posts containing the same word or phrase on that social media. Since use of #hashtag may strengthen brand awareness and boost consumer engagement, it has become increasingly popular in e-commerce marketing.
However, when promoting your product on social media, will use of another’s trademark as a #hashtag constitute trademark infringement? A recent decision under Case No. 2021-Ming Shan Tzu-18 issued by Taiwan Intellectual Property and Commercial Court (IPC Court) has ruled on this issue.
#Lightweight case
The plaintiff, OP Bicycle Co., Ltd. (OP Bicycle) asserted claims of trademark infringement and false advertising against the defendant, Marechal Asia (Marechal) for its use of various hashtags, including #lightweight on social media. The plaintiff, OP Bicycle owns a trademark registration for “LT and device” and is the exclusive distributor of the lightweight wheels for racing bikes manufactured by a German company, Carbovation GmbH.
The defendant, Marechal is a distributor of bikes under Italian brand 3T and offers the 3T bikes on its website and social medias. OP Bicycle alleged that Marechal tagged photos of 3T bikes with various hashtags, such as: #lightweight, #lightweightwheels, #Marechal Taiwan exclusive distributor, and #Asia exclusive on its Facebook groups, and that Marechal’s use of said hashtags misled the consumers into believing that Marechal is affiliated with the “LT” (abbreviation for “lightweight”) brand for lightweight wheels, or is an exclusive distributor of “LT” brand lightweight wheels manufactured by Carbovation GmbH, thus infringing the trademark “LT and device” registered by OP Bicycle. Marechal argued, on the other hand, that the use of said hashtags was permissible since it was nominative fair use.
Does hashtagging others’ trademarks qualify as trademark use?
The IPC Court holds that, where another’s trademark is used merely as a hashtag for promoting purpose and therefore does not function as a trademark to identify the source of the goods or services, such use would not constitute trademark infringement since the defendant is not using hashtag as a trademark. Moreover, the Court also points out that e-commerce consumers tend to be sophisticated about the fact that hashtags are merely marketing or commercial tools used to direct consumers to particular promotions, and not likely to cause confusion. Such fact should be taken into consideration in the determination of trademark infringement.
Further, the IPC Court determines that considering the fact that 3T bikes sold by Marechal were indeed equipped with genuine lightweight wheels manufactured by Carbovation GmbH, Marechal’s use of the hashtag #lightweight should be permissible since its intent was to promote its own 3T bike equipped with lightweight wheels, rather than suggesting OP Bicycle’s sponsorship or endorsement.
Besides, the IPC Court holds that given the “first-sale” doctrine, OP Bicycle’s trademark rights should be considered exhausted because the genuine lightweight wheels bearing the registered trademark “LT and Device” has been placed in the foreign market by the trademark owner or with its consent. Therefore, OP Bicycle is not entitled to prevent others from reselling or using the “LT and Device” branded lightweight wheels.
Takeaways
This area of law is continuing to evolve. While under the current practice, there is no consensus among the Courts regarding the #hashtag issue, a critical factor that the Courts would generally consider in trademark infringement analysis is whether the defendant’ use is likely to cause consumer confusion.
As a general rule, if use of another’s trademark in a #hashtag suggests sponsorship, association or endorsement by the trademark owner, thereby creating a likelihood of confusion, the use would be at risk of trademark infringement. However, if the use merely promotes the user’s own goods or services, such as manifesting the user’s product is compatible with another’s product or originates from the same source, it may be deemed as fair use and permissible.
At the current stage, it would be prudent to consult legal advice before using another’s trademark as a #hashtag. If you have any questions regarding trademark use on social medias, please feel free to contact us for more information.