The development of social media and the new age of influencer marketing has revolutionised the way in which brands, endorsers and consumers interact with one another to promote their products and services. Using hashtags on social media is a great way of advertising one’s brand and increasing visibility and to gain exposure among the general public. Hashtags are key to building followers or aiding posts on social media to become ‘viral’. Even an unknown person can easily become famous with good content and solid hashtags. Hashtags are used by placing words in profiles which allow them to be viewed in search engines.

It is the power of social media and evolving technology that resulted in a potentially ordinary word becoming a unique searchable expression. By adding a hashtag to a particular word or a phrase, businesses attempt to popularise the same and make it the face of their brand for a particular period. Popular examples of hashtags that were given trademark protection are #smilewithacoke and #icebucketchallenge. Brands often use hashtags to promote or popularise a social media campaign or a new product launch or an event.

Hashtags ideally relate to the specific market in which they are trying to gain reach.  This is one of the reasons why registerability of hashtags is still in its nascent stage, as courts are still weighing whether hashtags are too descriptive to afford trademark protection as observed in Eksouzian V. Albanese[1] or whether they can in fact be considered as a source identifier, an essential feature of a trademark. The main issue arises with controlling third party participation in a popular hashtag, which may dilute the identity of the brand. This was seen in the case of Fraternity Collection LLC v Fragnoli[2] where the respondent, being a former employee of the petitioner company used the hashtags ‘#fratcollection’ and ‘#fraternitycollection’ in respect of her own goods, closely similar to that of Fraternity Collection LLC’s, thereby endangering the goodwill of the company. The court in the instant case observed as thus: “hashtagging a competitor’s name or product in social media posts could, in certain circumstances, deceive consumers”. The free and extensive usage of brand names in the form of hashtags such that it is being used in respect of rival brands or by infringers, makes the trademark generic and lose its distinctiveness. Anyone with a social media account can use a hashtag and pass off the goods/services offered by the owner of the mark as that of theirs and only those companies that have the privilege of exclusive marketing, are afforded the protection. This protection, if given without adequate regulatory measures, may also be used by corporate giants to claim rights over generic or common words, and a clear example of this was during the Rio 2016 Olympic games. Businesses that were not official sponsors of the Olympics (but that had sponsorship deals with individual athletes) were banned from using the hashtags such as ‘Rio2016’, ‘Olympics’ or any common word in relation to the Olympic event in their advertising messages in order to protect the rights of the official sponsors and thus social media users of the United States had to proceed with caution before tweeting with the event-related hashtag.

Hence the question of ‘distinctiveness’ ought to be reconsidered as hashtag trademarks are most commonly used in respect of a specific event/ campaign and thus such trademarks would not have acquired distinctiveness within such a short period of time. The primary test of distinctiveness and whether the mark is capable of distinguishing the goods/services from that of others ought to be considered while giving protection to hashtag marks. Guidance from the United States Patent and Trademark Office (USPTO) states that “A mark comprising of or including the hash symbol (#) or the term ‘hashtag’ is registerable as a trademark of service only if it functions as an identifier of the source of the applicant’s goods or services.”[3] It states further “Generally, the hash symbol and the wording Hashtag do not provide any source-indicating function because they merely facilitate categorisation and searching within online social media. If a mark consists of the hash symbol or the term Hashtag combined with wording that is merely descriptive or generic for the goods or services, the entire mark must be refused as merely being descriptive or generic”.

In India, Section 9(1) of the Trademarks Act says that the trademarks which are not of distinctive character cannot be registered. Hence, the rules that apply to a normal trademark will apply to a hashtag mark as well, that it should be distinctive and capable of distinguishing the goods or services applied for. As a result, common words as hashtags may not suffice the essential characteristics of a trademark and may not be eligible for registration, as this would ultimately deter users who wish to post with common hashtags. Therefore, choosing the right hashtag trademarks, their registration and proper policing of their use are also important aspects of brand promotion. Hashtag protection, when properly policed has a lot of benefits like helping the proprietor prevent any third party from using the said hashtag and diverting traffic. Protecting distinctive hashtags through trademark laws may become helpful in the long run for businesses to popularize their brands.

By

Shilpa U Iyer

www.puthrans.com

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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[1] 2015 WL 4720478 (CD Cal 7-8-2015).

[2] No. 3:13-CV-664-CWR-FKB, 2015 WL 1486375

[3] https://www.wipo.int/wipo_magazine/en/2017/05/article_0009.html