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Blog: #trademarkingthehashtag

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Article Tags:
opinion

Ben Bestgen

With the rise of using social media for brand-recognition and brand-promotion purposes, many clients wonder if a logo or slogan that starts with or includes a “#” can be trademark-protected says Ben Bestgen .

Many companies are happy to create Twitter or Instagram profiles and start a thread, using the #-sign as a communication tool in a marketing campaign, though not always in the sense of seeing the # as part of a trademark.

However, looking at prominent hashtags like Nike’s #makeitcount, Wyke Farm’s online campaign surrounding #FreeCheeseFriday or the relatively recent trademark-applications by CocaCola for #cokecanpics and #smilewithacoke, companies are not always happy for people to indiscriminately hashtag and spread the brand’s slogans, products and logos online. This is especially true where the hashtag is being used to distribute misleading or offensive commentary about the brand.

Often the #-tagged slogans are used not just on the internet, but also on packaging and products, indicating the significance of the #-tagged slogan for the brand.

Given that companies like CocaCola or McDonald’s have significant numbers of followers on their social media feeds, the argument that a #-tagged slogan or logo can be highly distinctive and will be understood by consumers to directly identify the brand is persuasive. In such a case, seeking trademark protection can be a reasonable thing to do.

But looking into the law around this issue, there is surprisingly little authority for Europe or the UK involving the #, so it is worth gathering some key points of what we currently know:

  1. The #-symbol itself cannot be purchased by anybody. It is a general communication tool, free to use by everyone.

  2. Using a # within a brand name can be used to add to its distinctiveness and gain trademark protection. The potato-snack “Mas#tags” is a good example for this.

  3. Where a slogan is strongly linked with the brand and consumers will recognise the brand by recognising the slogan, trademark protection can be possible. An example is “Have a break.” Normally this is not a candidate for a trademark, because it is a commonplace and ordinary phrase. However, “Have a break – have a Kit Kat.” became linked with the Kit Kat chocolate bar, due to the company’s year-long and successful advertising campaign using the slogan. Therefore “Have a break.” was afforded protection. It is likely that CocaCola and Nike are relying on similar arguments.

  4. It is possible to get trademark-protection for a #tagged slogan in Europe and the UK: For instance, #likeagirl is a protected trademark owned by Procter & Gamble under the categories for female hygiene products and advertising. The latter category expressly includes “ social media, blogging and other forms of passive, shareable and viral communications.”

    5. On the enforcement side of things, it is worth noting that:

    1. Trademark infringement can be difficult to prosecute on social media. Twitter, for example, does not pre-clear any tweets by its members and only sometimes removes tweets which are clearly offensive or would infringe a trademark. It can be too costly for any company to effectively police social media for misuse of a #-tagged trademark. Furthermore, internet-users (and thus customers) often do not appreciate businesses who try too strongly to enforce their online-rights and restrict free speech or content-distribution: An overzealous enforcement campaign could backfire against the brand.

    2. If the # is used on clothing, packaging and tangible goods, enforcement should be easier and more effective, as competitors can be made to stop using a protected #-tagged slogan for their own goods.

      3. Currently it appears that applications for #-tagged slogans in the US seem more prevalent. It looks likely that further developments on this subject will be informed by US approaches to protection and infringement claims.

      We currently are not aware of any significant UK or European caselaw relating to hashtags and trademark infringement, but it will certainly raise interest if such a matter should go to court. With the ever-increasing use of social media for advertising and the force that certain viral posts can have regarding brand-recognition, it sounds reasonable to assume that disputes for #-infringement are not too far away.

      Blog: #trademarkingthehashtag

      • Ben Bestgen is a trainee at Brodies LLP.

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