By Rachel Armstrong
Tuesday 20th of December 2016.

Introduction

Hashtags were first used as a social media symbol by Twitter as a way for users to curate and navigate content related to a specific subject matter. It did not take long for the hashtag phenomenon to take hold across the internet globally. Initially expanding onto other social media platforms such as Facebook, Instagram and Pinterest, hashtags quickly caught the attention of brand owners who realised the potential marketing benefits of promoting products and services through the use of hashtags.

Due to the huge expansion in use of hashtags in a commercial setting, perhaps inevitably questions started to arise as to the inherent registrability of hashtags as trade marks and the potential pitfalls associated with using trade marks as hashtags. In 2010 only a handful of companies had applied to register trade marks, this number has increased to thousands by 2016 with the number expected to rise. As such, this is a good time to consider a few of the key considerations to keep in mind when using hashtags commercially.

Inherent registrability

The first consideration is the proposed length and scope of the campaign associated with the hashtag. If it is a short campaign, for example, raising awareness of an upcoming launch or event, then registration is unlikely to be appropriate as the hashtag is unlikely to be registered prior to the end of the campaign, and the hashtag is specific to an event so unlikely to be used in the same form again.

The next consideration is whether the hashtag will meet the necessary criteria to qualify as a trade mark. The fact that a hashtag is being used in a social media or marketing campaign does not mean that it will be registrable as a trade mark. One key question to ask is, “is the hashtag being used like any other registrable trade mark, i.e. to identify the source of the goods or services?” Due to the difficulty of applying trade mark law principles to the issues surrounding hashtags, the decisions of the Courts do vary which means it is difficult to set any hard and fast rules. However, the United States Patent and Trade Mark Office (“USPTO”) considers four main factors when considering whether or not a hashtag is registrable, (i) context, (ii) placement of the hash symbol in the mark, (iii) how the hashtag is being used, and (iv) types of goods or services identified.

In the UAE, where the position on hashtags as registrable trade marks is far less untested, we consider the USPTO position to a good starting point for considering whether the UAE Trade Mark Office will consider a hashtag mark as registrable.

Hashtags which include trade marks – risk of infringement

Due to the widespread use of hashtags, especially as part of marketing campaigns, it is easy to overlook the question of whether the intended hashtag includes a trade mark or well-known tagline. While there is less risk associated with descriptive or non-distinctive hashtags, it may be worth conducting clearance searches for distinctive elements of hashtags before commencing use. This is especially the case if the hashtag is part of an orchestrated, wide reaching marketing campaign which is due to run for a significant duration as such use of a third party trade mark as part of the hashtag may well constitute infringement. Further, the wider reaching the campaign, the more likely that the owner of the mark will take action to protect its trade mark.

Therefore, for wider reaching campaigns that involve distinctive marks as part of the hashtags, it may be worth approaching the use of the hashtag as you would a new product launch, i.e. conduct trade mark searches in the relevant class of goods and services in the most relevant jurisdictions to minimise risk. The relevant classes to search will require careful consideration, for example, for a marketing campaign for soft drinks sponsoring a football tournament, the brand owner should be looking to conduct searches in class 32 covering beverages and class 41 for the sponsorship of football teams.

Risks associated with use of trade marks as hashtags

The global reach of content, which is posted by reference to a specific hashtag, is indisputable. However, brand owners should also be aware of the challenges and potential pitfalls of using its trade marks as hashtags. The main risk is the lack of policing of hashtags as, once in use; brand owners lose control over the use of the hashtag and, in a worst case scenario may risk liability should users use the hashtag inappropriately or negatively. Although it is possible to have systems in place to try to police the use of hashtags, brand owners should think particularly carefully as to the potential risk associated with a specific hashtag campaign.

Once again, the level of risk will also depend on the particular nature of the campaign for which the hashtag is being used. In many cases, the aim will be for as many people as possible to use the hashtag to extend the awareness of the campaign as far as possible. Therefore, where you actually want people to use the hashtag, you would not necessarily want to protect it as a trademark. Indeed, where you are encouraging the widespread use of the hashtag and it becomes synonymous with the specific marketing campaign then arguably, the hashtag will become generic and unenforceable.

Concluding remarks

The law surrounding the protection of hashtags as trade marks is an area which is constantly developing as existing legal provisions are interpreted to apply to hashtags. Whilst there are no hard and fast rules, we recommend careful consideration at the outset of any project which involves the use of a hashtag, with particular focus on the intended use of the hashtag and whether such use warrants trade mark searches and or protection by way of trade mark registration.