Trademark Law: the non-protectable nature of “#” symbol in France

In France, in a notice published in the Official Journal of January 23, 2013, the General Commission for Terminology and Neology defined “hashtag” or “mot-dièse” as “a meaningful sequence of characters without spaces starting with # (hash), which indicates a topic of interest and inserted into a message by his editor to facilitate the identification thereof.” Within a few years, the hashtag has become a key element of social networks, both for individuals, particularly journalists, as well as for companies through their trademarks. Companies try to register trademarks comprising the symbol “#”. Nowadays, companies are increasingly launching commercial or promotional transactions with hashtags. For instance, Nike’s “#makeitcount” campaign to celebrate 20 years of business in the football arena. Using hashtags makes marketing operations more interactive than traditional slogans used to. Undoubtedly, the hashtag is a new powerful communication means which companies cannot dispense of.  If some companies reached to protect trademarks with the symbol, a recent decision from the Cour d’Appel of Paris held the secondary nature of the symbol.

First of all, a hashtag may be protected by trademark law. In France, Article L. 711-1 of the IPC provides that “may in particular constitute [such] a sign : a) denominations in all forms such as words , combination of words, surnames and geographical names, pseudonyms, letters, numerals, abbreviations (…)“. Provided that they meet the validity criteria of a trademark, hashtags can therefore be protected as trademarks. There are also a few examples of companies which were successful in registering trademarks constituting the famous symbol “#”, mainly in the United States. As concerns France, the “# CLIENT ADDICT” trademark was filed by Futur Telecom under number 4096205 in class 9, 35, 38 and 42. A decision [1] was recently delivered by the Director General of the National Institute of Industrial Property (INPI) between two trademarks falling in the classes of similar products that made direct reference to the symbol, “#ashtag” and “#HTAG#” trademarks. The director of the INPI found that there were visual, phonetic and intellectual similarities between the two signs. Accordingly the application for registration was dismissed. In addition, the director merely scrutinized the similarities without paying close attention to the specific character of the “#” symbol. Contrariwise, a sole judgment was delivered about the hashtag as a trademark where a company which was the trademark holder of “Cloud 9” had objected to the registration of the “# Cloud” trade mark. In this case, the Cour d’Appel upheld the decision of the Director of the INPI and dismissed the registration of the trade mark, due to the dominant element “cloud” being taken up anew, which generates confusion. But the noteworthy aspect of this judgment lies in the assessment of the symbol “#” which, due to its common use, “shall lead the average and reasonably prudent consumer to consider it as secondary in his perception of the sign in dispute, even if it were to precede the verbal element.”[2].Therefore, the judgment implies that the symbol “#” should be regarded as secondary and as such, cannot be protected in France. In this respect, the United States disagree since the “#” trademark was registered under number 4643644 on November 25, 2014 at the USPTO.

[1] The General Director of INPI, decision dated December, 23, 2014, L’Atelier de l’Optique / Anya K.
[2] CA Paris, Pôle 5, chamber 2, December 5, 2014, n°14/14773, S.A. Foncière Lyonnaise c/ Ball & Young Limited.