Hashtags and Trade Marks: A Digital Media Prodigy – Lexology

Hashtags and Trade Marks: A Digital Media Prodigy – Lexology

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Introduction 
The evolution of social media platforms has resulted in increased consumer engagement online and dissemination of information across the globe. These platforms help small as well as large enterprises in marketing and promoting their brands in a quick and cost-efficient manner. One of the emerging tools for such marketing and promotional activities on social media platforms is the use of the symbol ‘#’ along with a word or phrase to gain more likes and views which leads to consumers identifying the product with the brand and purchasing them. The use of hashtags, especially for brand-specific terms, holds more power than one may realize—if a hashtag goes viral, it may become an ultimate marketing tool.
As per research conducted by Clarivate Analytics, there were only seven companies across the world that submitted applications for trade mark specific hashtags in 2010. However, in 2016, around 2,200 applications for registrations of hashtag-specific trade marks were filed globally.
Laws Protecting Hashtags in Various Jurisdictions
The United States Patent and Trade Mark Office (USPTO) first recognized the registrability of a hashtag in 2013. As per Trade Mark Manual of Examining Procedure (“TMEP”) 1202.18, hashtags are registrable trade marks “only if [the mark] functions as an identifier of the source of the applicant’s goods or service”. Further, it was noted that when examining a proposed mark containing the hash symbol, careful consideration should be given to the overall context of the mark, the placement of the hash symbol in the mark, the identified goods and services, and the specimen of use, if available. There have been numerous cases where trade mark registrations have been granted to hashtag marks on the basis of the acceptable specimen filed by applicants demonstrating the use of such marks. Few examples include, ‘#HOWDOYOUKFC’ for “restaurant services, ‘#THESELFIE’ for “photography and videography equipment, namely, remote shutter releases”, etc.
Although there is no official policy on the registrability of hashtags as of now, the EU courts have recognized hashtags as trade marks as there are marks such as ‘#ShareACoke’ by Coca Cola, ‘#SpeakBeautiful’ by Loreal Paris, which have been registered on the EU trade mark Database . It is worth noting here that registrability depends on the general principle of distinctiveness. 
In the United Kingdom, a mark is registrable if it is not prohibited under Section 3 (1) b of the Trade Marks Act, 1994 i.e., it is not devoid of distinctive character and has the capacity to individualize the goods and services of a particular undertaking. 
In India, to qualify as a trade mark under the Trade Mark Act, 19995 , a hashtag has to satisfy two conditions: (a) It should be capable of being represented graphically and (b) It should be capable of distinguishing goods and services of one entity from another. The first condition is generally fulfilled in cases of hashtag marks as they are capable of being represented graphically. It is the second condition that becomes an issue as in order to prove distinctiveness, it should be shown that customers identify the hashtag with the applicant’s products and services exclusively and with no one else. 
Judicial Decisions 
The USPTO has recognized that the use of hashtags can lead to trade mark infringement. In TWTB, Inc. v. Rampick , the Court recognized use of a hashtag to be relevant to the likelihood of confusion analysis and evidence of an intent to trade off the right holders’ goodwill. In Pub Impact, LLC v. Boston Consulting Grp., Inc. 7 , the Court found that there was likelihood of confusion based on the defendant’s use of the plaintiff’s trade mark “PUBLIC IMPACT” in the defendant’s twitter username “@4PublicImpact” and its frequently used hashtag ‘#publicimpact’ after taking into account the risk of harm to the plaintiff’s business, mark, and reputation. In Fraternity Collection, LLC v. Fargnoli , the Court accepted that “hashtagging a competitor’s name or product in social media posts could in certain circumstances, deceive customers”. Therefore, these decisions have recognized that there is a risk of harm to a business's reputation and a likelihood of confusion in the minds of the consumers if a wellknown brand’s mark is used on social media platforms even with the hash symbol.
Even though there are not many cases of protection granted to hashtag marks, the European Courts have also recognized that a sign consisting of the ‘#’ symbol may be registered as a trade mark if it complies with the conditions of Trade Mark law. The Court of Justice of European Union (CJEU), in a decision dated September 12, 20199 , in the context of a preliminary question, specified that “It cannot a priori be excluded that a sign comprising a hashtag, such as that at issue in the main proceedings, is capable of distinguishing the goods and or services in respect of which registration is sought as coming from a particular undertaking and therefore satisfies the condition referred to above. It is in fact possible that such a sign be presented to the public in relation to goods or services and be capable of performing the essential function of a mark, which is to indicate the commercial origin of the goods or services covered”. 
Widely reported as the first instance of trade mark registration for a social media campaign, Wyke Farms Limited, the UK’s largest cheese producer, was successful in getting registration of the trade mark ‘#FreeCheeseFriday’ for its social media campaign in 2014. In order to obtain this registration, a vast majority of evidence was filed at the UK IP office which included use of the words as a hashtag on various social media platforms. Therefore, this case highlights that the use of a hashtag can assist in proving acquired distinctiveness.  
Although there are no precedents regarding protection granted specifically to hashtags in India so far, the courts have recognized the importance of brand protection in relation to the same. In Moonshine Technology Private v. Tictok Skill Games Private, the Delhi High Court recognized usage of hashtags as well while granting protection to the plaintiff’s well-known mark “BAAZI”. It was the case of the plaintiff that the defendant dishonestly started using plaintiff’s well-known trade mark “BAAZI” along with “WinZo”, with respect to the services they were providing and thus, passing off their services as those of the plaintiff on their website and mobile application. The Court, while ruling in favor of the plaintiff, directed the defendants to remove any references of use of the plaintiff’s well-known brand in any form or manner, including as hashtags. Therefore, the Court took into account that use of a wellknown brand in the form of a hashtag would also be included within the spectrum of violation of a person’s intellectual property rights. 
Conclusion
As per a Business Search Report, the global social media market size is expected to grow from $159.68 billion in 2021 to $223.11 billion in 2022 at a compound annual growth rate (CAGR) of 39.7%. This massive surge reflects the popularity that social media platforms have achieved in just one year. In light of this growth and the increasing cutting-edge competition in the digital world, it has become important for businesses to protect their brands on social media platforms, more so now than ever. Hashtags increase the searchability of products– with just a click, consumers are subjected to a wide variety of options in relation to the hashtag used. Therefore, it becomes crucial for brands to create a niche in this regard so that consumer traction is directed only towards their brand. This is where the registrability of a hashtag as a trade mark becomes important. Judicial decisions from the United States of America provide an insight on how misuse of hashtags, being a source identifier for a particular brand, can lead to infringement and the courts in the United Kingdom and European Union elaborate on the scope of protection available to hashtags under Trade Mark Laws. While the international stance on hashtags has evolved, in the Indian context, its position is still at the nascent stage when it comes to hashtags being recognized as a primary business tool which warrant protection as trade marks. As hashtags have gained enormous momentum in the world of online marketing, it is imperative that businesses take a step forward and protect their brands from all forms of infringement. 
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