By – Nidhi Tandon
Hashtags are all around us. You log into any social media platform like Instagram, Facebook or Twitter and you will see pictures with captions like “OOTD, #throwbackthursday”, etc.
Hashtags began to be first used on Twitter by Chris Messina in 2007 and, since then, there has been no looking back. From its success in driving various activist campaigns across the globe such as the #MeToo movement, #BlackLivesMatter, #Narishakti (ban on triple talaq) to large companies launching social media campaigns around a hashtag, i.e., #sayitwithpepsi by pepsi, #CaughtOnDropCam by Google, #WantAnR8 by Audi, #NationalFriedChickenDay by KFC, #ShareACoke by Coca-Cola, #LetsDoLunch by Domino’s Pizza, #WorthSaying by L’Oréal Paris etc., hashtags have earned an enviable status as marketing tools.
Companies and celebrities are looking to cash-in on these ‘viral-trends’ to promote and distinguish their products, profile and services while enhancing their ‘connect’ with consumers/followers/fans.
Given such extensive usage and leverage of hashtags, the key question that arises is whether hashtags can be registered as Trademarks.
Position of the United States Patent and Trademark Office (USPTO)
The USPTO in 2013 ruled that a hashtag could be registered as a trademark only if it acts as an identifier of the source of the person’s services or goods and is unique and distinctive. Several hashtags like #EveryDayMadewell, #TheSelfie #HowDoYouKFC #smilewithacoke, #cokecanpics, #McDstories and #makeitcount have received trademark protection in the United States. Even then, as you will see below, courts have not yet taken a definitive position on this issue.
The California Central Court in Vahan Eksouzian v. Brett Albanese held that hashtags are not trademarks; they are only descriptive devices. However, in the case of Fraternity Collection LLC v. Fargnoli, the US District Court of Mississippi held that a hashtag can be considered as a trademark. In the case of TWTB Inc. v. Rampick, the US District Court of Louisiana held that the claim of trademarking a hashtag is valid and the use of such a hashtag can be considered as evidence of a particular business. Therefore, it appears that a hashtag can be registered as a trademark but for that it must not only qualify as unique and relevant but also not infringe any existing rights.
Positing in European Union (EU)
Althoughthere are a number of hashtags such as #SpeakBeautiful by Loreal Paris, #ShareACoke by Coca Cola registered on the EU trade mark database already, there does not appear to be any official EU policy on the registrability of hashtags as of now. However, registrability is likely to be determined on the same principle of distinctive character as that of ordinary word marks.
Position in United Kingdom
In the United Kingdom, a mark can be protected if it is unique & possesses the ability to individualise the goods and services of a specific source. The same principle is also applied to hashtags.
Position in Australia
IP Australia made necessary changes in the Trade Marks Office Manual of Practice and Procedure in 2016 to incorporate the definition for a hashtag & highlighted the factors on which hashtags shall be examined for trademark protection.
Whether hashtags can be registered in India?
In India, a trademark inclusive of a hashtag will be subject to the same rules that apply to any other trademark. Therefore, the basic requirement will be that a trademark has to:
Be graphically representable; and
Acquire a distinctive character i.e. be able to distinguish the goods and services of one person from another’s.
While a hashtag may qualify under the first requirement as it is a combination of words and numerals that is represented graphically, meeting the second requirement may be a challenge. The second one requires the hashtag to acquire a distinctive character (able to distinguish the goods and/or services of one person from that of the other).
Under Indian trademark law, a mark can be rejected when it doesn’t have any ‘distinctive character’. The trademark may either be inherently distinctive in nature due to it being an invented word or it may be something that is in use for a longer period of time such that people start to identify the particular source through that trademark only. Hashtag may easily fall under the above two categories as it can be an invented word and it can be something that trends for a longer period of time such that people start identifying the particular source through #Hashtag only. The hashtag mark has to pass the conditions of distinctiveness to gain trademark protection in India. Merely applying a hashtag to a common word or generic word would not make it a distinctive trademark.
Surprisingly, no hashtags appear to have been registered as trademarks in India.
Looking at the global proliferation of social media, the emergence of hashtags as trademarks will soon become a hot topic in the IP world. As we see it, hashtags do have the capacity of being registered as a trademark and can go a long way in promoting the brand if the right steps are taken including the use of only unique and relatable hashtags with the products/services.