[Patent Attorney Commentary] Can hashtags be registered as trademarks? Thorough coverage of legal risks and avoidance measures for "trademark infringement" hidden in SNS marketing

*As it is a case-by-case basis, please consult a patent attorney for specific application strategies.

Chapter 2: What you don't know is scary! The line at which hashtags become “trademark infringement”

Even more serious than the question of "I want to register a trademark" is the question of "I may have infringed on another company's trademark rights."

The biggest fear for SNS operators is that a hashtag they casually added becomes 'Trademark Infringement', resulting in them receiving a warning letter or having their account suspended.

1. Standards set by judicial precedent (Reiwa 3 "Charmantsac case")

A well-known leading case regarding hashtags and trademark infringement is the Charmant-Sac case (judgment made on September 27, 2021), which was fought in the Osaka District Court.

In this case, the issue was whether the act of a seller of handmade products on a flea market app that included hashtags such as "#Charmantessac" in the description constituted trademark infringement.

The court foundtrademark infringement for the following reasons.

1. There is a source display function: The hashtag was used in a way that was recognized as indicating the brand of the product, more than just a search tag.

2. Intent to attract customers: By tagging a famous brand, the intention was to direct users who are looking for that brand to your product page (free ride).

This judgment has a very serious meaning as the court has clearly shown that ``Just because it is a hashtag does not make it an exception to trademark law.''

2. The difference is whether it is a "trademark use"

Not all uses of hashtags are infringing. Legally, the deciding factor is whether it falls under "trademark use".

[Case that is likely to be safe (not a violation)]

• Pure descriptive explanation:

  When using a registered trademark to explain compatible models, such as "This smartphone case is compatible with #iPhone13."

• Personal impressions/topics:

  Diary-like posts like "I ate lunch at #McDonalds today. It was delicious!" This is not a trademark use (display for selling your own product), so there is no problem in principle.

[Case that is likely to be out (infringement)]

• Opportunistic marketing (free ride):

  When selling anonymous sneakers, tag them with "#NIKE #adidas" to attract search traffic.

• Brand misidentification and confusion:

  Tagging that misleads people into thinking that their products are collaboration products with famous brands.

• Highlight in advertising banner:

  Place another company's trademark in the form of a hashtag in a large logo-like manner within the Instagram ad image.

Chapter 3: Three common pitfalls for social media marketers

Here, we will take a deep dive into the patterns and countermeasures for troubles that often occur in actual business settings.

Pitfall 1: Hijacking of campaign tag

Suppose your company plans a campaign called "#〇〇Contest" and spends a large amount of advertising money to spread the word. However, if you haven't registered the word "〇〇" as a trademark, your competitors may use the same hashtag to post on the bandwagon and steal your customers.

[Countermeasure]

When creating your own campaign tag, it is best to complete the trademark application at the planning stage. If you have trademark rights, you can smoothly submit a takedown request to the platform side (Meta, Company X, etc.) on the grounds of trademark infringement.

Pitfall 2: Lack of control over influencer marketing

When a company requests an influencer to post a PR post, there are cases where the influencer posts with "# (other company's brand name)" at their own discretion.

In this case, the client company also risks being held jointly tort liable.

[Countermeasure]

It is important to not only clearly state in the contract with influencers that they will not infringe on the intellectual property rights of others, but also to share in advance a list of hashtags to be used (whitelist) and a list of hashtags that should not be used (blacklist) in advance to establish a check system before posting.

Pitfall 3: Unauthorized use of abbreviations and nicknames

There are many cases where abbreviations are registered as trademarks, even if they are not official names.

(Example: Not only "McDonald's" but also "Mac" and "McDo" are registered as trademarks, and not only "Starbucks" but also "Starbucks" are registered as trademarks)

It is dangerous to use an abbreviation tag for commercial purposes with the assumption that it's okay because it's not the official name.

Chapter 4: "Offensive" hashtag strategy to accelerate your business

We continued to talk about risks, but trademark rights are essentially a weapon to strengthen your business. We will explain the benefits of strategically acquiring rights to hashtags.

1. Monopoly and protection of brand community

If a fan community (UGC) is formed around a specific hashtag, you can protect the "atmosphere" of the community by registering that keyword as a trademark.

If spammers or unrelated business solicitations flock to that tag, they can be excluded based on trademark rights.

2. Expansion into licensing business

If you can create a very popular hashtag (coined word), you could consider a business model of licensing the rights to use that tag to other companies and collecting usage fees.

Especially in the apparel and event industries, catchy words themselves have value.

3. The key is how to choose designated goods and services (categories)

When registering a hashtag as a trademark, it is very important to decide which "category (genre)" to register it under.

For example, if you are an apparel brand, "Category 25 (Clothing)" is essential, but if you are planning an SNS campaign, you will also need to know "Category 35 (Advertising)" and "Category 41 (Providing information/Holding events)".

If you make a mistake in selecting this classification, you may end up with a loophole where you may have a trademark for clothing, but the rights do not extend to online advertising activities. This is an area where the expertise of a patent attorney is essential.

Chapter 5: Why should you consult a patent attorney regarding hashtag issues?

"If you look it up on the internet, you might be able to apply by yourself."

Some people may think so. However, the issue of hashtags unique to SNS requires the support of an expert patent attorney. Here are three reasons why.

Reason 1: Advanced "similarity judgment" is required

The most difficult step in trademark registration examination is determining whether the trademark is similar to an existing trademark (similarity).

In the case of hashtags, the comparison elements are complex, such as the presence or absence of "#", uppercase/lowercase letters of the alphabet, pronunciation (pronunciation), and meaning (idea).

Even if you apply with the idea that ``it's okay because it's just one letter different,'' if the patent office determines that it's ``similar,'' the stamp fee will be wasted. Patent attorneys accurately assess the possibility of registration (registration possibility) based on a large number of past trial decisions and examination standards.

Reason 2: Designing a "scope of rights" that anticipates the future of business

The goal is not simply to receive a registration certificate. It is the lawyer's job to anticipate ``what kind of SNS measures will be taken in the future,'' ``will there be overseas expansion,'' and ``what kind of competitors will appear,'' and to design the strongest scope of rights without omissions.

Hashtags in particular come in and out of fashion rapidly, so a speedy and flexible application strategy is required.

Reason 3: Serves as a shield in case of warnings and troubles

In the unlikely event that you receive a content-certified letter from another company stating that your product is infringing, having a patent attorney will allow you to respond calmly.

By analyzing whether the other party's claim is legally valid (not just a pretense) and preparing an appropriate response, we can help resolve disputes quickly and advantageously.

Summary: What you can do now to protect your SNS words

Thank you for reading to the end.

Hashtags in SNS marketing are a magical tool to connect with users all over the world, but at the same time, they are also a knife fraught with legal risks.

• Offensive strategy: Register your own campaign tag as a trademark to monopolize and protect your brand.

• Defensive strategy: Conduct appropriate investigations and thoroughly implement operational rules to avoid infringing on the trademark rights of other companies.

Only when these two wheels are in place can you safely accelerate your SNS marketing.

"I want to start a new campaign, but are these tags okay?"

"I want to protect my company's brand tag, but in what category should I register it?"

"I'm having trouble because I received a warning from another company"

If you have such concerns, please do not try to resolve them on your own, but please consult our office, which is an intellectual property professional.

We will help you spread your brand safely and powerfully in the ocean of SNS.

About inquiries

At our office, we handle trademark searches, application representation, and infringement appraisals related to SNS marketing.

We have a track record of resolving many inquiries regarding hashtags.

The first consultation is free, so please feel free to talk to us via Zoom or in person.