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Novagraaf UK joins IP leaders to share #trademark expertise

03-05-2017

IP practitioners meet in London today to address challenges in the brand protection landscape at MarkMonitor’s annual Spring Symposium.

London-based trademark attorney Claire Jones of leading Intellectual Property (IP) consultancy Novagraaf is speaking on the topic of #trademarks at digital brand protection specialist MarkMonitor’s annual symposium today. The event seeks to provide IP practitioners in London with insight into the increasingly challenging on- and offline brand protection landscape.

  • As social media becomes an everyday part of corporate marketing practice, there is a pressing need for trademark guidance that relates to use and protection of brands on social media platforms, such as Twitter.
  • Trademark law and practice guidance is not moving fast enough in this area. For example, guidance from intellectual property offices in respect of hashtag-based trademarks does not yet exist in the UK or EU, and is fairly minimal in the US.
  • As a result, many brand owners remain confused about how trademark law is applied to hashtag-based trademarks on social media.

In an effort to combat this confusion, today’s symposium includes a presentation from Novagraaf’s trademark attorney Claire Jones entitled ‘#trademarks - A new frontier for brand protection?’. Thomson CompuMark will also be releasing its updated research into hashtag-based trademarks at the event.

Are #trademarks registrable?
A hashtag seeks to encapsulate or express an idea or a theme; serves as a means of promotion; and, in addition to building brand identity, can be searched for and commented on. If it is used to promote a brand, product or service, a hashtag can generate sales and brand recognition, making them an important marketing tool for businesses. However, simply putting a hashtag symbol in front of a word or saying does not automatically turn that brand name or advertising slogan into a registrable trademark. The #word or #saying must still fulfil the standard function of a trademark in order to be registrable, and satisfy the criteria for trademark registration.

Can you enforce trademark rights against potentially infringing #trademarks?
Legal uncertainty lingers over the question of whether the use of a registered trademark in or as a hashtag when creating online content can be seen as contrary to trademark law; for example, as infringement of trademark rights. “While applications for hashtag trademarks are on the rise, there is very little trademark case law on enforcement against them,” explains Claire Jones. “It is still very early days, and this may just be due to businesses seeing how things pan out before taking action, especially if they have benefited in some way that outweighs any negative effect.”

When considering registration of hashtag-based trademarks, businesses are encouraged to consider the following factors:

  • Is your #trademark used consistently? Any trademark application must be for the actual term being used; be careful of using variations that aren’t covered by the registration.
  • Does your business plan to use the #trademark in the long term?  If a campaign is likely to be short lived, it is likely that the trademark will not become registered until after the campaign has ended.
  • Is the chosen #trademark distinctive? In order to be capable of registration, the sign must be capable of distinguishing your brand, and must not be descriptive or generic.
  • Does your business already have trademark registrations?  While hashtags are a popular new area of marketing campaigns, registering the hashtag element isn’t always necessary if your business already has registrations for the word element of the trademark.

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