Following the news that Coca-Cola has applied to register two hashtag slogans as trade marks in the US for #cokecanpics and #smilewithacoke, would these be registerable in the UK / Community?
Probably yes, on the basis that they contain “Coke”, one of the world’s most well-known trade marks. But what about slogans which don’t contain such famous trade marks?
Slogans are typically easier to register in the US than in the UK and Europe. Unless a slogan meets the usual requirements for registration as a trade mark (distinctive for, and not plainly descriptive of, the goods / services, not generic, contrary to public policy or accepted principles of morality etc) it is unlikely to be seen as a registrable trade mark by a UK or Community Examiner and simply adding a hashtag to the beginning is unlikely to change their mind in the majority of cases.
Most slogans will only be registrable in the UK/Community where they are clearly distinctive (e.g. because they contain an existing trade mark (e.g. “HAVE A BREAK, HAVE A KIT KAT”) or because they have acquired distinctiveness through extensive use (e.g. which led to “HAVE A BREAK” being registered independently of “KIT KAT”).
Therefore, “ThirstIsEverything” and “AdvancementThroughUnderstanding” which are unlikely to be considered inherently distinctive in the UK or Community, are unlikely to become registrable trade marks simply by applying to register them as “#ThirstIsEvertything” or “#AdvancementThroughUnderstanding”.
However, adding a hashtag can in some cases give a slogan sufficient distinctive character to make it a registrable trade mark and it is clear that applications to register hashtag slogans marks are on the up. More than 40 word mark applications were filed in the UK in 2014 to register ” # ~~~~ ” marks.
Some of those accepted include:
- #lovemud (advertising and brand management, telecoms, design services),
- #forpeoplewithwind (flags)
- #THEARTOFVODKA (Vodka)
- #MakeYouSmile (for a broad range of things)
- “#techmums (Education)
- #TOGETHER (sporting activities and training)
- #MIXITUP (Vodka)
Some of those that were rejected / abandoned include:
- #Mini Legend” (Babies’ clothing)
- #POSITIVITY (mobile and tablet accessories, jewellery, clothing, social media,
- #LDN (T-Shirts)
Similar principles apply to trade marks based on domain names.
Provided that a domain name meets the usual criteria for registration as a trade mark it can be registered in the UK / Community together with the domain name suffix (“.co.uk”, “.com” “.org” etc) – “LAST.FM”, “LASTMINUTE.COM”, “WEBUYANYCAR.COM” and “COMPARETHEMARKET.COM” have all been registered as word marks in the UK / Community.
As a general rule, the suffix is considered non-distinctive and examiners largely ignore them when assessing whether the mark is registrable. However, according to the UK IPO’s Manual of Trade Mark practice, there may be exceptions to the rule: “For example TWIST AND SEAL would be liable to an objection for storage jars on the basis that it describes a characteristic of the goods, whereas the addition of “.COM” gives the sign as a whole a trade mark character”. The addition of the “.com” was sufficient to turn “WEBUYANYCAR” (only registrable on the basis of evidence of use) into a registrable mark “WEBUYANYCAR.COM” (registered without evidence).
While hashtags and domain names are clearly important from a marketing perspective and for brand engagement, they do not automatically turn any word mark or advertising slogan into a registrable trade mark. However, they can provide the distinctiveness required to get borderline marks over the threshold and onto the register. The chances of success seem to be higher by applying for a very narrow, targeted list of goods / services.
Bear in mind that if a mark / slogan is registered with a hashtag or domain name suffix, that may not give you the right to prevent other people using the same mark without the hashtag / suffix and it won’t give you the right to prevent others using the same mark in a purely descriptive manner or in a non-economic context (e.g. you couldn’t use a registration of “#LoveThis” to stop people tagging things they like on social media with this phrase or get them to pay you every time they use it).
In theory, extensive use of a hashtag mark / slogan could give rise to common law rights under passing off even where you haven’t registered it but the fast moving pace of social media marketing and the desire for trending mean that a hashtag can very quickly be used by substantial numbers of people and can take on a life of its own and morph. Proving you have accrued sufficient goodwill in the hashtag and have the right to stop someone else from using it is therefore likely to be very challenging.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.