Member Article

Brand owners rush to protect hashtag marks

Growing use of hashtags by consumer-facing businesses and other organisations, to extend the reach of their marketing messages and increase their online visibility, has led to a surge in applications for trade mark registrations for # phrases at the UK Intellectual Property Office (UKIPO).

Branded organisations such as Iceland (#toocoolforplastic), Coral Group Trading Ltd (#yourcall), Boohoo.com (#allgirls) and the Royal Foundation of the Duke and Duchess of Cambridge and Prince Harry (#headstogether) are among those that have successfully registered hashtag marks in the UK during 2018.

Research conducted by European intellectual property firm, Withers & Rogers, has revealed that the UKIPO granted 91 trade mark registrations for words or phrases containing a hashtag in 2018, 26% more than in 2017. A further 37 applications are pending.

Tania Clark, partner and trade mark attorney at European intellectual property firm, Withers & Rogers, and President of CITMA, said:

“The fact that some household names have succeeded in securing registrations from the UKIPO for marks containing hashtags may be encouraging other brand owners to act similarly. If successful, they could secure an exclusive right to use these marks in category-specific marketing and communications content.

“However, brand owners should be aware that including a hashtag alongside a word or phrase will not make the path to protection any easier. The UKIPO has confirmed that the inclusion of a hashtag symbol has no bearing whatsoever on whether a trade mark registration is granted or not, as the symbol itself is not regarded as distinctive. Nevertheless, if brand owners can provide evidence that a descriptive or non-distinctive hashtag phrase has acquired distinctiveness through use, then it is likely to be granted.”

In order to achieve a trade mark registration for a hashtag phrase in America, the US Patent and Trademark Office (USPTO) states that the phrase must be an ‘identifier of the source of the applicant’s goods or services.’ A number of brands have secured registrations in the US for hashtag phrases including #HowDoYouKFC for the KFC Corporation, #BlameMucus for Mucinex cold and flu remedies and #BestFeelings for SC Johnson branded air fresheners.

The power of hashtag phrases to increase a brand’s visibility has made them an essential part of any integrated communications campaign, and this may be behind the recent surge in registrations. Whilst some hashtag trade marks include a brand name, others are simply a collection of short words that have become synonymous with a specific campaign.

Tania Clark said:

“Growing use of social media, combined with the fact that Google now includes hashtag phrases in its search results, means brand owners are increasingly keen to protect them. By doing so, they can prevent rivals from using them.”

This was posted in Bdaily's Members' News section by Withers & Rogers .