With its judgment of 30 July 2024, the Milan Court ruled on an interesting dispute concerning the well-known footwear trademark Dr. Martens.
In the case at hand, the claimant company, owner of the trademark in question, alleged infringement of its rights, arguing that the defendant, without authorisation and for the purpose of promoting its own footwear, had used the Dr. Martens sign on some of its social media pages through the use of hashtags such as #drmartens, #drmartenslover and #drmartensstyle.
Use of a trademark as hashtag
The Court first observed that the use of a trademark as a hashtag serves the specific function of facilitating users’ searches for content and intercepting an audience interested in a particular brand or topic. In light of this function, and considering that hashtags are a tool capable of amplifying the visibility of posts, the Court held that, where a hashtag contains a third party’s trademark, it constitutes a use relevant for the purposes of trademark infringement.
Accordingly, in the present case, the judge found that the use of hashtags containing the Dr. Martens trademark was clearly instrumental in promoting the defendant’s products and suitable to create a (non-existent) association between the footwear marketed by the defendant and that bearing the well-known trademark of the claimant. The defence argument that the inclusion of the hashtags was solely intended to direct users towards the claimant’s brand was therefore rejected.
On the contrary, the Milan Court emphasised that such conduct had in fact resulted in an undue competitive advantage for the defendant, which exploited the notoriety of the third party’s trademark to generate confusion as to the origin of the products and to suggest the existence of a non-existent commercial link between the two companies.
In summary, according to the Milan judge, the use of a third party’s trademark as a hashtag on one’s own social media channel constitutes an infringement of trademark rights, as it suggests to the public the existence of an economic or commercial link with that distinctive sign, even where the trademark is not actually and materially affixed to the products.
Protection of the position mark
The judgment then addresses the issue of the position mark, with specific reference to the famous Dr. Martens sign consisting of the wide yellow stitching applied to the welt of the footwear.
On this point, the Court clarified that protection of such a mark is strictly limited to the distinctive representation as registered and therefore cannot automatically extend to any other stitching in a different colour. According to the judge, in essence, the distinctive “key” of the mark lies in the bright yellow colour of the stitching, which is capable of immediately capturing the attention of the relevant public.
Consequently, in the absence of a faithful reproduction of this element, infringement of the position mark was excluded with regard to all those items of footwear marketed by the defendant in which the stitching in fact appeared in a different colour (for example white, beige or orange).
Nevertheless, the Court held that the adoption of stitching in a different colour, but applied in the same position and in chromatic contrast with the upper, could still give rise to a risk of confusion in the form of so-called “post-sale confusion” (a phenomenon that occurs when, at a time after purchase, third-party consumers, other than the purchaser, become confused as to the authentic or counterfeit nature of a product purchased by others).
From this perspective, the Court found the existence of a case of unfair competition by slavish imitation, referring to the principles established by the Supreme Court, according to which the assessment of likelihood of confusion must be carried out in a synthetic and overall manner, from the point of view of the average consumer, taking into account the immediate impact and not through a fragmented analysis of the products being compared.
Conclusions
The decision under review therefore highlights how the inclusion of a third party’s trademark within hashtags used for promotional purposes may constitute infringement, as it is capable of misleading consumers by making them perceive an origin or a commercial link between companies that does not in fact exist.
At the same time, the ruling reiterates that, in the field of position marks, protection is strictly limited to the visual element as registered, without the possibility of extending it to merely similar variants, without prejudice to the relevance of such conduct from the perspective of unfair competition.
Giulia Mugnaini