This article was originally published in IAM Media.
The hashtag (#) has come to play a vital role in consumer society, which most businesses cannot afford to overlook. As the use of hashtags grows, Russian law has had to address whether they can be registered as trademarks in Russia and if it is possible for a third party to infringe another entity's trademark rights by using a hashtag that includes a registered mark
Background
A hashtag is a type of metadata tag used on social networks, which allows people to apply dynamic, user-generated tagging. This in turn helps others to easily find messages with specific themes or content. The use of this tag was first proposed by Chris Messina in a tweet in 2007. He decided not to patent it because he felt that it was "born of the Internet and owned by no one". The word 'hashtag' was added to the Oxford English Dictionary in 2014, so common had its use become. Today, they are used worldwide by businesses, celebrities and influencers, among others, not only for navigation purposes but also to promote goods and services.
This is where trademarks and hashtags overlap – or on many occasions – collide.
Registering a hashtag
A hashtag can be registered as a trademark in Russia, although the '#' element must be disclaimed. Further, the registration requirements for this type of mark are the same as for traditional ones. However, it is not necessary to register a hashtag (which incorporates a trademark) as a mark on its own in order to secure protection against unauthorised use on social networks.
According to the country's law, a mark may be used in offers of sale, performance of works and provision of services, as well as in advertisements, on signs and the Internet, which includes a domain name and other methods of address.
Infringement
In some cases, a third party`s use of a registered mark in a hashtag can be construed as trademark infringement. However, this heavily depends on the purpose of its use. To reiterate, hashtags, including those with registered trademarks, can be used as classifications and as means of individualisation. Therefore, a typical user could use a hashtag as an invitation to a specific conversation, to search topics and publications, for taxonomy purposes or to address complaints. These would not be considered to be third-party infringement in Russia.
On the other hand, organisations and individuals who generate income on social networks using a third party's trademarks in their hashtags could be found to be misleading consumers. This is the basis for judging whether an infringement has taken place – that is, if a trademark is used in a hashtag by others in business activities for the purposes of attracting consumer attention (due to the trademark's notoriety) and if there is a potential to create confusion among consumers.
Presently, there are few Russian court decisions in infringement cases relating to hashtags. However, recent cases suggest that the use of a trademark in a hashtag may be considered to be infringement in cases where consumers are misled or may be misled by third-party producers of goods or services. In assessing whether trademark infringement has occurred, an organisation should consider whether:
- the trademark was used for business purposes;
- business areas of the company and a potential infringer overlap; and
- the producer of the goods or services can be clearly determined by potential consumers.
On the other hand, if users tag a company`s mark for general informational purposes, then it is probably best to view it as welcome, free advertising.
Comment
In Russia a hashtag can become a trademark and vice versa. Using a hashtag that incorporates a registered mark may violate trademark rights, but entities should pay attention to the specific circumstances of each case and be attentive when using another party's trademarks in hashtags.