Trademarks and social media: Simply communication or evidence of use?

If a brand owner uses a mark on social networks, does it constitute actual evidence of use? Florence Chapin examines a recent EU ruling on trademarks and social media that provides some guidance. 

When does the use of a mark on social network sites constitute actual evidence of use? This was the question before the EU General Court on 7 February 2024 when it issued its ruling in Case T‑74/23.  

As background to the case, Caramé Holding AG had designated the European Union in its International Registration for the figurative sign (pictured right) on 1 March 2016, covering the following goods in Class 3: “Preparations for the cleaning, care and beautification of the skin, nails, lips, eyes and hair; perfumery; cosmetics; decorative cosmetic products; nail care products; hair care products; hair styling products.” 

Oriflame Cosmetics AG filed an opposition in respect of the above-mentioned goods on 25 November 2016, based on the earlier International Registration No 822 851 (pictured left) that it had registered on 19 February 2004. This earlier mark designated Bulgaria, Latvia, Lithuania, Poland, the Czech Republic and Slovenia and covered “soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices” in Class 3. 

In support of the opposition, Oriflame Cosmetics stated that it had been commercially exploiting the earlier mark since 2003 by using it both in its principal trademark and as a standalone trademark on its goods and marketing materials. The company referred to and documented its guidelines relating to the earlier mark, its online presence and its choice to market and promote its goods by direct selling by means of independent sales consultants promoting the goods on social media, distributing catalogues and organising events during which samples were offered and orders were taken. 

Stylised trademarks and the question of genuine use 

Following a request by Caramé Holding, the European IP Office (EUIPO) asked the applicant to furnish proof of genuine use of the earlier mark. After assessing that evidence, EUIPO’s Opposition Division rejected the opposition on 4 April 2022. The applicant filed a notice of appeal, arguing that it was usual for many companies to vary their trademark by using two forms to identify their goods: first, a complete form and, second, an abbreviated form represented by a stylised letter which was also used in the complete form. By way of example, the applicant cited, among others, the complete forms Nespresso, Fila, Carlsberg and Disney and the abbreviated forms represented by the stylised letters ‘N’, ‘F’, ‘C’ and ‘D’, which were also used as the first letters in the corresponding complete forms. 

Nonetheless, the Board of Appeal dismissed the appeal on the ground that the applicant had not proved genuine use of the earlier mark, either on its own or in combination with other elements, such as the word elements ‘oriflame’ or ‘one’. 

Appeal to the General Court 

The applicant challenged the Board’s decision on the basis that it infringed Articles 42(2) and (3) of EU Regulation 207/2009. Article 42(2) provides that, if the applicant has so requested, the proprietor of an earlier EU trademark (EUTM) who has given notice of opposition is required to furnish proof that, during the period of five years preceding the date of publication of the EUTM (now the date of filing or the date of priority in Article 47 of Regulation 2017/1001), the earlier trademark has been put to genuine use in the territory in which it is protected in connection with the goods or services in respect of which it is registered and which the proprietor cites as justification for its opposition, or that there are proper reasons for non-use.  

The applicant submitted that the Board had incorrectly assessed the evidence placed on the file. According to the applicant, that evidence served to prove genuine use of the earlier mark, whether that use had been in the registered form on its own or in combination with other elements. It also dwelt on the need for the Board to assess the role and weight that may be given to the evidence relating to the use of that mark on social media which was placed on the file.  

The General Court’s decision  

The General Court pointed out that, during the proceedings before the EUIPO, the applicant placed evidence on file to define the facts and circumstances relevant to establishing whether the commercial use of the earlier mark during the relevant period was real to prove that there had been genuine use of that mark in the territory in which it was protected as regards the goods in respect of which it was registered and on which the opposition was based. This evidence showed use of the earlier mark not only in combination with other elements, but also as a standalone mark on goods and marketing materials. 

The Court considered as sufficient:  

• Evidence provided by the commercial exploitation of the earlier mark as a standalone mark, for example on the back cover of its 2015 annual report. 
• Evidence of use at the top of the cap of a cosmetic or perfumery product or at the base of a tube containing another cosmetic product. 
• Extracts from social networks, such as Facebook, Instagram, YouTube and Twitter (X), application stores such as Google Play, and reproductions and use of the earlier mark as such on social networks. The use of trademarks on social networks was relevant because it is a common means of communication in the field in question. 
• Screenshots of articles or websites demonstrating use of the mark; and  
• Invoices used to prove the use of the mark on the top of the cap or lid of cosmetic products to guarantee the identity of origin of the products for consumers who would only be able to see the cap or lid.  

The Court thus concluded that the Board of Appeal had erred in its assessment and its decision was annulled.  

What the ruling means for trademarks and social media 

The reasoning of the Court relating to evidence based on trademarks and social media is interesting and will certainly be used in future decisions.  

The Court considered that the applicant was right to claim that the Board of Appeal did not give sufficient weight to the use made of the earlier mark on social media. The use of social media was part of the commercial use of the earlier mark defined by the applicant. The accounts which referred to the earlier mark on the various social media mentioned by the applicant were often viewed on small screens, such as those of telephones, on which there was not much space, and therefore favoured the use of the abbreviated form of that mark. The extracts submitted also served to establish that the mark was used to identify the applicant’s goods, whether for promotion or marketing purposes, for example by means of videos, photos or texts.  

For further guidance on trademarks and social media or evidence of use, speak to your Novagraaf attorney or contact us below.  

Florence Chapin is a Trademark Attorney at Novagraaf in Bordeaux, France. 

This article first appeared in WTR Daily, part of World Trademark Review, in February 2024. For further information, please go to www.worldtrademarkreview.com.