How to Use Social Media to Prove Fame

The pervasiveness of social media continues to grow, and has now extended to the realm of intellectual property. With this in mind, the Famous and Well-Known Marks Committee, European and Central Asia Subcommittee and the United States Subcommittee collaborated on this two-part regional perspective explaining how to submit evidence of social media usage to prove fame to courts and to administrative tribunals.

Here, Part 1 of the series provides a perspective from the European Union.

Social media now pervades everyday life, and it seems unlikely that the popularity of social media will change in the near future. Knowing that consumers may spend more time on Facebook, Twitter, Instagram, and other platforms than on perhaps any other websites, businesses recognize the importance of social media platforms in engaging with customers.

Social media recently became a tool to prove a trademark is used, well known, or has a reputation. An opponent may tend to claim that its earlier trademark has an important distinctive character either intrinsically or by virtue of its being known by a significant part of the public.

Thus, in recent years, trademark owners have increasingly developed the habit of submitting extracts from public data that appear on their social media pages, such as the number of followers, posts, likes, published photographs, and location, to demonstrate the large extent of use of an earlier trademark.

Both local and European trademark offices (French Trademark Office (INPI) and the European Union Intellectual Property Office (EUIPO)), as well as the French courts, have recently ruled on the use of social media evidence, either for proof of use or proof of the well-known character of a sign.

Social media evidence by itself usually is not accepted as a proof of use by INPI or by French courts (CA PARIS, RG 17/06254, Sept. 25, 2018), although as long as such evidence is dated and shows use of the sign as a trademark relating to the goods and services in question, it can be taken into consideration. For example, INPI has accepted as proof of use screenshots from YouTube showing images of gas stations with a shop and some extracts from Flickr, Twitter, and Instagram representing similar signs in relation with distribution of goods. INPI, No.17-5038, June 18, 2018.

Regarding the well-known character of a trademark, courts have held that 3,700 followers of a Facebook page, and a considerable number of views of a video posted on YouTube, does not sufficiently indicate that a broad fraction of the French public would identify the relevant sign as a trademark. INPI, No. 17-3191, Sept. 22, 2017. Some of the most recent decisions are as follows: INPI, No.17-4339, January 30, 1/2018; INPI No.17-4645, March 12, 2018; INPI, No.18-2303, September 6, 2018; and INPI, No. 18-2309, July 30, 2018.

On the contrary, French courts have considered that the KUSMI TEA and CLINIQUE trademarks (TGI PARIS, RG 16/10717, Mar. 23, 2018 and CA PARIS, RG 17/01193, June 20, 2017) are well-known thanks to evidence showing the presence of the marks on social media.

Yet, EUIPO considered that the reputation of the FAST & FURIOUS trademark was not established in the EU despite the fact that the mark had 3.5 million Instagram followers and 59 million Facebook fans. EUIPO, Opp. no. B254307, Nov. 2, 2018. For now, it is difficult to estimate the number of followers required to establish reputation.

This data will be made more easily analyzable, both for offices and courts and for legal practitioners, when the evidence provided allows us to identify the relevant public targeted by these social networks.

In this respect, social media platforms have also been developing built-in features dedicated to professional accounts. These tools are referred to as “analytics” and provide very precise data on the audience reached on the particular platforms-such as geographical area, age, gender, mother language, level of education, and many other criteria.

To this point, no decision has been issued based on evidence gathered through analytics provided by social media platforms. For example, EUIPO examiners considered that the screenshots of public Facebook mentions provided did justify the use of the trademark, but did not prove the degree of knowledge of the mark by the relevant public. EUIPO, Opp. no. B2799966, Nov. 12, 2018. One may assume that with data extracted through analytics, such evidence could have been provided.

Trademark owners may find significant value in analytics data because, with regard to trademark law, this data makes it possible to establish more precisely the determination of the relevant public, the intensity of use, and the territory of exploitation. Given the prevalence of brands interacting with consumers across the wide variety of social media platforms, it seems safe to say that we can only expect additional evidence of social media usage will continue to be submitted as evidence of a brand’s fame and well-known status.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2019 International Trademark Association