#50ShadesOfSway


Nathalie Dreyfus of Dreyfus & Associates examines the hashtag and whether the prolific marketing and sharing tool can be protected as an intellectual property right

The hashtag is a little tool that can cause quite a stir. In the days following the attack against Charlie Hebdo, the hashtag ‘#JeSuisCharlie’ was tweeted more than five million times worldwide, peaking at 6,500 tweets per minute on the night of the tragedy. In France, in a notice published in the Official Journal on 23 January 2013, the General Commission for Terminology and Neology defined ‘hashtag’, or ‘mot-dièse’, as: “A meaningful sequence of characters without spaces starting with # (hash), which indicates a topic of interest and inserted into a message by his editor to facilitate the identification thereof.”

There is no denying the importance of this new communication tool in our connected society. Within a few years, the hashtag has become a key element of social networks, both for individuals, particularly journalists, as well as for companies through their trademarks.

While hashtags are widely used by their members, they also constitute a new strategic communication tool for businesses as they can reach out to customers through advertising campaigns or contests. The first time the hashtag was used for a campaign, in this case for the Audi brand, was at the Super Bowl in January 2011. Nowadays, companies are increasingly launching commercial or promotional transactions with hashtags. For instance, Nike ran a ‘#MakeItCount’ campaign to celebrate 20 years of business in the football arena. Using hashtags makes marketing operations more interactive than traditional slogans have done in the past

Undoubtedly, the hashtag is a new powerful communication means that companies cannot be without. They try to capitalise on hashtags by using them as a vehicle to foster their trademarks. As they evolve into essential assets for businesses, can we consider the potential protection of hashtags by intellectual property rights?

Copyright law: transposing the protection of the title to the hashtag

Firstly, the hashtag can be protected by copyright provided that it meets the criterion of originality. In France, a hashtag may well be considered as a work of the mind under the French Intellectual Property Code (IPC). According to Article L 112-1 of the IPC: “The provisions of the code protect the rights of authors in all works of the mind, whatever their kind, form of expression, merit or purpose.” The case law relative to copyright protection of the title could be transposed to hashtags to ensure their protection. However, the assessment of originality is subject to a degree of subjectivity, as evidenced by rather random case law, oscillating between ordinary titles and original titles. By way of example, the TV series Les Brigades du Tigre and the novel Les Dames du Lac were considered trivial, while ‘Charlie Hebdo’, or more recently, ‘Cinquante nuances de Grey’ [(Fifty Shades of Grey), were all deemed to be original.

Furthermore, since hashtags usually consist of single words, a title comprising one word is almost always considered trivial, unless it was created from scratch. Case law has always been hostile towards the originality of first name-titles, such as ‘Manon’ for the opéra-comique by Massenet, or ‘Angélique’ for the movie on Marquise des Anges. The protection of hashtags by copyright, unless they were created from scratch, will be difficult given the unsettled case law. Nevertheless, copyright can allow the author of a hashtag to seek recognition of its rights if there is piracy.

Protection by trademark law

A hashtag may also, and above all, be protected by trademark law. In France, Article L 711-1 of the IPC provides: “[The following] may in particular constitute a sign: denominations in all forms such as words, combination of words, surnames and geographical names, pseudonyms, letters, numerals, abbreviations.” Provided that they meet the validity criteria of a trademark, hashtags can therefore be protected as trademarks.

Registration in due form allows protecting the hashtag against any illegal copying or imitation. However, it seems rather incongruous that the holder of a trademark right on a hashtag would prohibit its use by internet users, since the very purpose of hashtag is to be shared. As a result, only its use in the course of business, by a competitor, will tend to qualify as infringement. The affected company must, to counteract this infringement, comply with the provisions set out in Article 713-2 of the IPC.

There are also examples of companies that have successfully registered trademarks constituting the famous symbol ‘#’, mainly in the US. The operator T-Mobile USA, for example, filed the ‘#7NightStandChallenge’ trademark (No 4671787) at the US Patent and Trademark Office (USPTO). This trademark, registered on 13 January 2015 in class 38 for telecommunications services, is the subject of a competition of the same name. At the EU level, an application for the registration of the ‘#Love’ trademark by Sony Pictures, falling under class 41 for TV entertainment services, is currently under consideration.

In France, the ‘#ClientAddict’ trademark was filed by Futur Telecom (No 4096205) in classes 9, 35, 38 and 42. A decision was also recently delivered by the Institute of Industrial Property (INPI) on two trademarks falling in the classes of similar products that made direct reference to the symbol. In this case, the owner of the previous trademark ‘#ashtag’ objected to the application for registration of the ‘#HTag#’ trademarks. The INPI found that there were visual, phonetic and intellectual similarities between the two signs. They produced the same overall impression, creating a likelihood of confusion regarding the origin of the two trademarks, so the application for registration was accordingly dismissed. In addition, the INPI merely scrutinised the similarities without paying close attention to the specific character of the ‘#’ symbol.

Moreover, the hashtag raises the question of proof of use of the trademark. According to Article 15 of the EU Council Regulation on the Community Trade Mark No 40/94 and France’s Article L 714-5 of the IPC, “the owner of a trademark who, without just cause, has not made effective and serious use thereof for the goods and services, for a continuous period of five years from the date of registration, shall incur forfeiture of his rights.”

The use of a hashtag on social networks is not sufficient to constitute use of the trademark, so it may be forfeited. In an attempt to avoid revocation, a hashtag should be used on products or for a wider marketing campaign.

The non-protectable nature of the ‘#’ symbol in France

In France, a sole judgement was delivered about the hashtag as a trademark. The case saw a company, which was the trademark holder of ‘Cloud 9’, object to the registration of the ‘#Cloud’ trademark. In this case, the Cour d’Appel upheld the decision of the INPI and dismissed the registration of the trademark, due to the dominant element ‘cloud’ being taken up anew, which generates confusion.

But the noteworthy aspect of this judgement lies in the assessment of the symbol ‘#’, which, due to its common use, “shall lead the average and reasonably prudent consumer to consider it as secondary in his perception of the sign in dispute, even if it were to precede the verbal element.” Therefore, the judgement implied that the symbol ‘#’ should be regarded as secondary and so cannot be protected in France. In this respect, the US disagrees, since the ‘#’ trademark was registered (No 4643644) on 25 November 2014 at the USPTO.

The hashtag is a small symbol that may prove to have great power. But could the hashtag become a genuine distinctive sign for an power, as the domain name or username for social media networks have? Indeed, if an owner managed, particularly through major advertising campaigns on social networks, to identify its products or services to hashtags, eligibility for a distinctive sign could be considered. It is still too early to draw conclusions.
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