This article was produced by Olswang LLP, which joined with CMS on 1 May 2017.
As Twitter's 10
th birthday approaches this week, we have noticed a growing trend by businesses looking to register their most popular hashtags as trade marks. Most readers will be aware that users of social media platforms like Twitter, Facebook and Instagram (and other social media pages) employ hashtags to draw together strings of conversation or photos relating to particular topics of interest. These can be anything from well-known television programmes to luxurious fashion brands. Millions of members of the public along with brand owners use hashtags as a way of communication. This communication could be referential (i.e. use by the public as a means of identifying a particular topic), or promotional use by proprietors exploiting their own brand. However, the use of hashtags can become tricky when a third party starts using a hashtag in an attempt to pass themselves or their products off as being connected to a more well-known brand. Could hashtags be misused in a way that could amount to trade mark infringement or passing off. We have seen a rise in the number of trade mark applications seeking to protect hastags, but are #Hashtags registrable as brand in their own right? Although there are a number of hashtags registered on the EU trade mark database already, there is currently no official UK or EU policy on the registrability of hashtags. However, registrability is likely to be determined on the same principles of distinctive character as that of ordinary word marks. It seems that adding the hashtag symbol to a word mark will not increase its chances of becoming registrable, as the examination will focus on the word itself, and whether it is distinctive and non-descriptive. This is similar to the registrability of domain names as trade marks, whereby elements such as .com or .co.uk are considered to be completely non-distinctive and are routinely disregarded in a subsequent comparison of marks. Even if a brand owner is able to get its hashtag registerable, does this have a practical purpose when it comes to enforcement? If the use is purely descriptive or referential (for example, a viewer of a TV show commenting on one of the programme’s characters), it seems unlikely that a proprietor would want or be able to bring a claim to prevent such use. In that type of case, use of the hashtag is not use in the course of trade in relation to goods/services, but merely referential (and therefore not actionable as trade mark “use”). Most uses of hashtags on sites such as Twitter are of this nature: they are not viewed as an indicator of trade origin. However, if the hashtag is being used in the course of trade to promote or sell goods or services, and a trader is trying to associate itself with an established brand, then this type of use may be actionable. There is currently no case law on this topic specifically in the context of hashtags, but we would expect the courts to apply largely the same infringement analysis as in ordinary trade mark cases. With social media now an important part of any brand's marketing, it makes sense for brand owners to consider protecting popular hashtags as stand-alone trade marks. Where a hashtag has independent trade mark significance as a distinctive brand – for example as a result of a successful marketing campaign such as Dove's #SpeakBeautiful campaign, L'Oreal Paris #WorthSaying campaign, Red Bull's #PutACanOnIt and Coca-Cola's #ShareACoke campaigns, then it is likely to be worth protecting. If not, there is likely to be little merit in separately registering it in the #hashtag form, particularly if the proprietor has already registered its brand in word-only form. When enforcing the brand before the Courts, the ‘#’ element is likely to be disregarded in a comparison of marks so a word-only registration for the relevant mark will sufficient protection from unauthorised use (in a trade mark sense) in hashtag form, even if the hashtag isn’t separately protected.
