International Hashtag Protection

Originally posted 2018-11-19 11:19:00

By Tikwiza Nkowane|

Ever since Twitter used hashtags, the phenomenon took off with a storm and is not letting up.  Businesses and individuals are now using this as a powerful marketing tool to help brand and promote catchy slogans.  As a continuing topic from the blog How to #Registeryourhashtag, once a hashtag is trademarked trademark infringement can occur.  This blog looks at the differences in interpreting when hashtag trademark infringement occurs in the US and Internationally.

Trademark infringement hashtags have created some controversy.  Take for example the well-known letter from the US Olympic Committee (USOC) sent out to non-Olympic sponsor companies during the Rio 2016 Olympics.  ESPN got its hands on the letter that the USOC wrote to non-Olympic sponsor companies warning them about stealing intellectual property, which stated:

“Commercial entities may not post about the Trials or Games on their corporate social media accounts,” reads the letter written by USOC chief marketing officer Lisa Baird. “This restriction includes the use of USOC’s trademarks in hashtags such as #Rio2016 or #TeamUSA.” 

So, what did this mean for people using the hashtags #Rio2016 or #TeamUSA during the 2016 Olympics, either for supporting their teams or promoting the games?

The mark “RIO 2016” is registered as a European Union Trademark for the International Olympic Committee (IOC), and thus has international protectionRegulation (EU) 2015/2424 is the law that governs EU Trademarks.  By application of Article 9 (2)(a) of Regulation No 2015/2424, the owner of the mark, in his case IOC, is entitled to “prevent all third parties not having his consent from using in the course of trade, in relation to goods or services”, a sign identical with that trade mark when that use is in the course of trade, is a “in relation to goods or services which are identical with, or similar to,  the goods or services for which the EU trade mark is registered, if there exists a likelihood of confusion on the part of the public…”

The concept of “likelihood of confusion”, is, therefore, a significant factor in considering trademark infringement, as it is also part of the assessment when registering for protection of a trademark.

Is/was the use of the hashtag “#Rio2016”, by another individual or company infringement on the trademark?

If we are to construe the definitions depending on the specific Tweet, the European Court in the case of CJEU, Cases C-236/08 to C-238/08, Google France, referred to Article 5(1) of the Directive 89/104 citing the cases of O2 Holdings Ltd v Hutchinson 3G UK Ltd (Case C-533/06 [2008]) and L’Oreal v Bellure (Case C-487/07 [2009]), relating to Comparative Advertising.

In the above cases, the use of the hashtag was for advertising purposes and comparing a product/ brand with another.  The hashtag #Rio2016 could, therefore, be comparable to the keyword advertising cases where a sign identical with a trademark is selected as a keyword by a competitor of the proprietor of the mark with the aim of offering internet users an alternative to the goods or services of that proprietor.  This would mean that there could be trademark infringement depending on the specific circumstances of the case, in particular, the content of the tweet.

Let’s turn to a contrasting case, from the US.  In Eksouzian v Albanese  (2015 WL 4720478 (CD Cal Aug. 7, 2015) the court stated that “hashtags are merely descriptive devices, not trademarks, unitary or otherwise, in and of themselves”, and held that Plaintiffs did not breach the agreement when they used #cloudpen as a hashtag.

It is evident that there could be no trademark infringement of IOC’s EU trademark when it was not used in relation to goods or services.

To conclude, the courts both Internationally and in the US, look to determine not only whether the hashtag phrases are unitary marks, but whether they are marks at all, making this case is one of the first to adjudicate whether and when hashtags can be trademarks.

Hashtag-related claims are now finding their way into trademark infringement complaints.  It is therefore important for individuals or companies intending to use specific hashtags to be aware of when infringement could occur.  Social media marketing is at the forefront of hashtags, and businesses should be aware of potential infringement when using hashtags.

The risks of hash-tagging well-known brands is an area of continuing development, particularly when it is used and gains profit economically from the hashtag.  It will be interesting to see whether the Court of Justice for the European Union will have more to say about this area.    This is an interesting area and an eye should be kept on the developments of new hashtag trademark infringement cases internationally and in the US.