When determining whether use of hashtags in relation to third-party trademarks on social networks might be infringing, it is important to consider the following key factors:

1 – Whether use of the hashtag is made in the course of trade in relation to goods or services;

2 – Whether said use adversely affects, or is liable to adversely affect the functions of the third party’s trade mark, among others the indication of origin, advertisement and investment functions.

The determination of trademark infringement in relation to the use of hashtags on social media can be a complex issue. In some cases, such as when competitors adopt hashtags that are confusingly similar to a registered trademark in order to promote their own products and services, or when said hashtags imply an unfair advantage or dilution/tarnishment of the third party’s well-known mark, it may be relatively straightforward to establish infringement. This was the case discussed in decision of the High Court of Justice of the United Kingdom in case Frank vs. Nike, in which Nike was condemned for trademark infringement for the use, in its promotional campaign, of the hashtag #LDNR, which was eventually considered confusingly similar to Frank’s LNDR trademark registered to identify competing goods with those of Nike [Frank Industries PTY Ltd v. Nike Retail BV et al. [2018] EWHC 1893 (Ch), Decision of July 25, 2018].

However, in other cases, it may be more difficult to establish whether the above requirements are met. This can be the case when Instagrammers, TikTokkers or, in general, influencers (on social media) hashtag famous brands in their posts, not with the aim of promoting specific goods or services or simply seeking a “describing” effect concerning said posts, but rather to raise the visibility of their posts and their own social/professional profiles on a social network.

In these cases, it may not be considered a trademark use in strict accordance with EU Trademark Law, as the objective is not related to promoting specific goods or services.

However, the EU Court of Justice has in the past clarified that the terms “use” and “in the course of trade” should not be interpreted as referring only to immediate relationships between a trader and a consumer, and that use of a sign identical or similar to a mark “presupposes” that the use occurs in the context of commercial activity with a view to economic advantage [Judgment of the CJEU of 16 July 2015, case C-379/14,TOP Logistics and Others, p. 40, 41 and 43 and the case-law cited].

Thus, even if the influencers’ objective is not related to promoting specific goods or services, at a potential level their profile is or can become a commercial instrument from which economic gains are obtained, thus if one of the trademark’s functions has also been adversely affected, infringement might be established.

This might happen when unauthorized hashtag use is performed in a way that suggests a possible association between an influencer and the brand, or when the owner of the hashtagged mark do not identify itself with the content published by said influencer, thus affecting the trademark investment function.