Trade marks as metadataPrint publication
A Canadian court has ruled  on the use of trade marks in metadata and also considered whether the use of hashtags – familiar to any user of social media – may constitute trade mark infringement.
Metadata is data that describes other data. Web pages use metadata to allow browsers to enhance the user’s experience. Clever use of metadata can draw traffic to a website, critical in today’s world for any business with an online presence.
The claimant, Red Label, is a travel business offering online travel information and services via its website. It has three registered trade marks: redtag.ca; redtag.ca Vacations & Design; and Shop.Compare.Payless!! Guaranteed & Design. The defendant, 411 Travel Buys, is an online travel agency offering information to customers online and arranging bookings for customers by agents over the telephone.
The metadata for 411 Travel Buys’ website included the terms “red tag vacations” and “shop, compare & pay less”. Customers visiting the website could not see this data. Nonetheless Red Label became aware of it and instituted proceedings for copyright and trade mark infringement.
The claim was unsuccessful. The Federal Court ruled that the use of a competitor’s trade mark or trade name as metadata did not, of itself, create a likelihood of confusion. The consumer was still free to choose among the search results and purchase goods and services from either of them. The use of metadata could affect search rankings but it did not affect the consumer’s choice. In order for trade mark infringement to exist there needs to be a confusion as to the source of the person or entity providing the goods or services in question – which there was not in this case.
Key to the Court’s conclusion was that the metadata was not visible. A different result might have been reached, the Court said, if Red Label’s marks had been visibly hashtagged – e.g. #RedLabel. The use of such a hashtag would be visible to consumers, thereby creating at least the possibility of a likelihood of confusion.
Hashtags are most readily associated with Twitter. Twitter’s policy on trade marks is that “using a company or business name, logo, or other trademark-protected materials in a manner that may mislead or confuse others with regard to its brand or business affiliation may be considered a trademark policy violation”. Whilst a useful warning to Twitter users, this does not really add anything to the state of the law. The test, at least in the UK and EU, is whether the use of a hashtag creates a likelihood of confusion.
No doubt it is only a matter of time before we see a case on whether the use of a hashtag is trade mark infringement. In the meantime, businesses should, if resources permit, monitor social media platforms like Twitter to see if their hashtags are being used by unwelcome third parties. They might also consider registering hashtags as trade marks.
 Red Label Vacations Inc (redtag.ca) v 411 Travel Buys Limited (411travelbuys.ca) 1015 FC 19