Created in 2011, Snapchat is a fast growing social media platform which now counts more than 150 million daily active users across the world while Instagram, founded in 2010, has more than 300 million users. These applications can prove to be effective marketing tools for businesses.
Snapchat: the perfect outlet for users’ spontaneity
There are many advantages to companies having a Snapchat account. Firstly, Snapchat reaches the younger audiences. In fact, 71% of Snapchat users are under the age of 25. Snapchat is widespread amongst teenagers and young adults because of its spontaneous and quirky characteristics. The originality of the application lies in the limited lifespan of its content which is between a few seconds and up to 24 hours.
Given the entertaining nature of the application, Snapchat can also be beneficial for the corporate image of a company. If the company builds on this and posts engaging content, it will promote its a friendly image and will show its willingness to engage with clients via different and innovation communication tools. The speed and ease of publication on the application are just some of its defining characteristics. For example, a company will be able to film its interior premises and reveal the work environment of its employees, thus opening up to its community of followers, by allowing them to relate to the company on what some might consider a deeper level, with the ultimate goal of enhancing and strengthening customer relations.
The ephemeral aspect of the application prevents users from posting negative comments on business accounts. Thus, there is very little risk of damage to a company’s corporate image.
Instagram, a popular social network now offering dedicated business accounts
Instagram is another social media network that has become a ‘must’ for a company’s corporate image. Instagram is an effective communication tool for introducing a trademark and associated products to internet users. Moreover, 46% of active users follow trademarks. For example, Louis Vuitton, the French luxury brand for luxury leather goods has 13.4 million Instagram followers.
Hence, through this network, a business can improve its ranking by making content it posts more visible and by targeting an audience more likely to be interested in its publications. By increasing its number of followers and reactions to its content, the business will gain more visibility on Instagram since this social network works by following an algorithm which puts forward the publications which have the most likes and comments. Instagram had announced on March 15, 2016 that “the order of photos and videos in the feed will be based on the likelihood that the internet users will be interested in the content, their relationship with the person posting and the timeliness of the photo or video”.
Like Snapchat, communicating with internet users via Instagram allows a company to be closer to its clients. By taking advantage of this innovative aspect of social media, brands can enhance their image, which helps to develop the interest of internet users for the trademark and associated products and/or services.
Furthermore, since May 2016, it is possible to create “professional accounts” on Instagram. Creating these types of accounts is free of charge as they are designed for companies to be able to have access to similar features already available for example, on Facebook company pages. Companies can display not only their contact information (telephone number, address, email address etc.) but also have access to statistics and can therefore obtain detailed information on the success rates of their publications.
Visual communication plays a leading role in today’s world. Snapchat and Instagram are bold and effective choices for businesses and their corporate image.
A success which can prove to be dangerous for company trademark rights
Success gives rise to imitation. Snapchat and Instagram are popular social media networks with hundreds of millions of registered users. However, like any other successful social media network, these networks are not safe from attacks on trademarks. Therefore, cybersquatters, already present in large numbers to attack trademark laws via domain names, attack these new social networks.
Companies thus need to adopt an appropriate strategy to protect themselves from such attacks and to defend themselves against internet scammers. Dreyfus specializes in the protection of online intellectual property rights and can assist you in your undertakings related to the protection and defence of your rights on social media networks.
Dreyfus may initially study the possibility of recovering usernames reserved by third parties. Indeed, these attacks on your rights should not be tolerated. However, if the names matching your trademarks are available, Dreyfus can reserve them. There are currently only a few judicial decisions relating to Snapchat and Instagram but lawsuits can be complex and expensive. It is therefore recommended that companies adopt preventive action before any of your rights are infringed.
Do not hesitate to enquire further about our wide range of services aimed specifically at protecting your IP rights on the Internet.
As content sharing on the Internet has become common practice for individuals as well as professionals (Facebook, Twitter, Pinterest, LinkedIn), the Court of Justice of the European Union gradually develops relevant jurisprudence on the matter of hypertext links.
When a hyperlink to copyright-protected content is made available online by the owner of the copyright (or with his/her authorization), it does not constitute an act of “public communication” as it does not address a “new public”.
What if the online content has been published without the authorization of the rights holder?
The Advocate General of the ECJ delivered his Opinion on this issue to the ECJ in the GS Media case C-160/15. The dispute is between Sanoma, editor of Playboy magazine, and GS Media, operator of the website GeenStijl.
GS Media published a hyperlink on the GeenStijl website directing viewers to an Australian site where Sanoma’s photos were published without its consent. Despite demands from Sanoma, GS Media refused to remove the hyperlink in question. When the Australian website removed the photos upon Sanoma’s request, GS Media published a new hyperlink to another website on which the same photos could be seen, published again without the consent of Sanoma. That site also complied with Sanoma’s request to remove the photos. Users of the GeenStijl forum posted new links to other websites where the photos could be viewed. Sanoma then sued GS media for copyright infringement.
The case escalated all the way to the Hoge Raad der Nederlanden, the Supreme Court of the Netherlands, which considered that it could not infer from the current ECJ case law that there was “communication to the public” when content is made freely available online without the authorization of the copyright owner. The European Court of Justice has therefore been asked to give a preliminary ruling.
Isn’t there a risk of “communication to the public” when placing a hyperlink to protected content without the authorization of the copyright owner?
The Advocate general of the ECJ, Melchior Wathelet, published his Opinion on April 7, 2016. The Opinion of the Advocate General is not binding on the Court of Justice but intends to propose a legal solution to the Court. According to the Advocate General, once the protected content is freely accessible on the Internet, hyperlinks placed on a website cannot be classified as an act of communication within the meaning of the Directive 2001 on the harmonization of certain aspects of copyright and related rights in the information society. Whilst the photos were possible to find, this was not necessarily easy. The photos were “freely accessible” on third-party sites. Initial “communication to the public” had already taken place and as a result, the hyperlinks only allow users a faster and more direct access to the content. The hypertext link thus only facilitates the discovery of websites where those photos are already published.
The actual act of “public communication” is made by the person who effected the initial communication. The hypertext link only leads to a website where the photos are already published without the authorization of the copyright holder. Consequently, hyperlinks cannot be classified as “acts of communication”. The intervention of the owner of the site who inserts the link is not indispensable for the photos in question to be made available to Internet users. In this case, GS Media’s intervention was merely to reiterate the content already online and is not indispensable to the provision of these photos being made available on the Internet. Moreover, the Advocate General considers that GS Media’s intentions and the fact that it knew or should have known that the initial communication of the photos had not been authorized by Sanoma are not relevant. Thus, the posting of a hyperlink to a website which published photos without authorization does not in itself constitute a copyright infringement.
An approach in line with the European case law
The approach of the Advocate General is in line with the ECJ case-law that gradually develops its decisions on the legal status of hyperlinks. In the Svensson case, judgement of February 2014, the CJEU had ruled on the legal status of a hypertext link. The Court considers that a website can place a hyperlink to protected content freely accessible on another website, without the authorization of the copyright holder. The creation of an Internet link which redirects a user to a protected content authorized by the copyright holder does not constitute “communication to the public” since there is no “new public”. Indeed, the work has already been communicated to the public beforehand. The hyperlink only “directs” towards this work.
In an Order of the Court of October 2014 in the BestWater case, the CJEU adopted the same legal reasoning concerning the hyperlinks by using the framing method. The CJEU held therefore that there was no “communication to the public” if the content concerned is neither directed at a new public nor communicated by using specific technical means different from that used for initial communication.
In France, an amendment to the bill for a digital Republic was filed by two MPs who would like to see a large number of hypertext links to disappear. The amendment is not in line however with the Svensson case which established the principle that clickable links to copyrighted works do not need authorization from the owner. As for the amendment, it intends to ensure that all hyperlinks are subject to authorization prior to publishing protected content.
Hyperlinks: central to the functioning of the Internet
As the Advocate General emphasized in his Opinion, interpreting this matter in the wrong way would entail far-reaching consequences in terms of the responsibilities of Internet stakeholders. It is important to strike a balance between disseminating information and enforcing copyright law. Any other interpretation of the notion of “communication to the public” would infringe one of the principal objectives of the Directive, namely the development of a European information society.
Furthermore, the Advocate-General notes that the above, would considerably impede the functioning of the Internet. Users visit sites and create hyperlinks to access such content. Internet users lack the knowledge and the means to verify whether the initial communication to the public of a protected work freely available on the Internet was done with or without the consent of the copyright holder. If Internet users risk liability for copyright infringement every time they place a hyperlink to content which is freely accessible on another website, they would be much more hesitant to post these links.
Until then, don’t be concerned, the trend is pushing towards the unrestricted use of hyperlinks!
ICANN manages the global resources of the Internet, that is to say it handles the management and coordination of Internet addresses such as IP address allocation, DNS and IP Protocols. Such functions are referred to as IANA: Internet Assigned Numbers Authority function. This particular function, managed by ICANN, was carefully guarded by the U.S. government since it is a critical function.
The U.S. was committed to preserving the IANA function since the creation of ICANN in 1998. When the internet was handed over to the private sector, the U.S. government was awarded a contract placing the federal courts as the final arbiter of disputes. The U.S. thus had the final say on every ICANN decision and could block decisions perceived as contrary to its interests.
While this emancipation was a long-term stated objective since ICANN’s inception in 1998, the project materialised only after the revelations of Edward Snowden in summer 2013 and the surveillance scandal involving the NSA. Weakened with respect to global diplomacy, the U.S. had to give in to pressure from over 150 countries including China, Russia and France along with the Afnic association (Association Française pour le Nommage Internet en Coopération, historic operator of .fr). It was not only the U.S. who had control over the internet however: Chinese companies like Alibaba, Tencent or even Baidu hold the same value as GAFA(Google, Apple, Facebook and Amazon).
What does this mean for the Internet and its users?
Prior to the expiration of the contract, ICANN was under the control of the U.S. Department of Commerce which had the power to force ICANN into bankruptcy. But the U.S. control over the Board of Directors has now been eliminated.
Henceforth, all Internet stakeholders will have a say and can participate in decisions. A general assembly alongside counter powers was thus created. This general assembly is made up of four groups:
– the private sector, involving stakeholders like GAFA, large companies and SMEs;
– the technical community;
– governments, composed of 160 members with one vote each;
– the civil society: consumer protection associations, civil rights associations.
If there is a consensus, this assembly may block a decision of the Board.
Americans are not excluded from any decision of ICANN. They form part of the general assembly, have a voice and can oppose any decision of the board. But with time and changing power relations, they could lose their influence.
ICANN’s main concern will therefore be to implement this new multi stakeholder model. The organisation must introduce changes in its culture so that it duly takes into account differences in culture, age, gender, language, career paths. Each community should be able to voice their concerns fully and be capable of influencing the organisation.
A significant change in the trademark law of the Cayman Islands
Previously, under The Patents and Trade Marks Law 2011, it was possible to gain trade mark protection in the Cayman Islands by way of an application for a UK or Community trade mark registration. With only a registration number, extension of that trademark protection could be requested in the Cayman Islands. The CIIPO would then conduct only a minimal examination of the trademark.
Furthermore, since the Cayman Islands is not a signatory of the Paris Convention, priority could not be claimed and trademark protection would be effective as of the registration date. The International Classification system was used and multi-class applications were allowed to the extent that these classes were requested for the registration of a UK or European Community trademark. Previsouly, the law also required the payment of maintenance fees payable to the Government of the Cayman Islands in January of each year. These fees could be paid up until March 31st of that year. Failure to pay annual fees would result in the suspension of protection of the trademark until payment was received. Beyond twelve months, the Registrar may cancel the record of the trademark.
What changes does the new law bring about?
As of now, the CIIPO will only accept national registration applications made directly to the Registrar.
In addition, the examination process will not be minimal, as applications will be examined on both absolute and relative grounds. There will also be a provision for opposition to the registration of the trademark.
The requirement to pay annual maintenance fees in order to maintain a valid trademark registration has however been retained.
Recommendations for registering your trademark
With the new law, which should enter into force during 2017, the timeframe to obtain a trademark registration will be extended.
We encourage you to register your trademarks directly with the Cayman Islands Registrar so as to prepare for the coming into force of the new law and for the potential issues that could arise. It is better to take prompt action in order to anticipate delays and the difficulties that the national Registrar will encounter in order to adapt to the new law.
Dreyfus & associés will certainly inform you of the developments in trademark law in the Cayman Islands. We remain available should you require any additional information.
The blockchain refers to data storage and transmission technology which is transparent and secure and operates without a central governing body nor any intermediary. It is an unalterable database that contains the history of all exchanges between its users, since its inception. Each transaction is encrypted and becomes a ‘block’ which is then validated automatically by the network. It operates with a digital currency; the bitcoin is the most common form. This currency allows for the creation a dematerialised settling of transactions.
A new type of organisation
The blockchain is thus based on a fundamental principle: the removal of an intermediary between two people involved in a transaction. There is therefore no need for trust among people interacting since the entire process is automated. While since its inception in 2007, the blockchain has been limited to financial transactions, it continues to grow and is now more widespread. It is therefore important to instill trust and confidence back in to interactions that involve more than one human individual.
What we are witnessing is the emergence of a new type of organisation. The central body that coordinates the interactions between individuals and recovers the generated value has disappeared. In these new systems, individuals themselves work together directly, without the intermediary. The operation system is indeed much more collaborative.
With this kind of decentralised collaborative application, the question now is whether to remove not only the intermediary but also the administrator, the “trusted third party” who certifies the validity of authentic deeds (for example, a notary).
The legal issues surrounding the blockchain
Henceforth, new legal challenges have begun to crop up, in particular the issue of liability. Indeed, if all actions are performed independently and anonymously, who will be liable for opening an illicit network? Even if the creator of the blockchain is identified (which seems difficult in view of the principle of anonymity which is omnipresent in such technology), the operations cannot be stopped since they are carried out independently of the blockchain.
Clearly, it is unreasonable to apply traditional legal rules to this new and expanding digital environment. It is therefore essential to establish a new legal framework that can support, in particular, the development of the blockchain. The expression “code is law” illustrates the need for a new techno-legal revolution for the digital world, independent of the physical one.
As to the regulation issue, one may wonder what position the government will adopt vis-à-vis the blockchain. While the blockchain can afford to evade the rules in force as well as State control, it can also lose its potential if the States seek to have too much influence on it.
The legal status of the blockchain
Discussions have already been held at the National Assembly in France. On May 13, 2016 an elected representative of Eure-Et-Loir département, filed an amendment to the recognition of the blockchain in payment systems and conferring upon it the same legal status as a deed. Although the amendment was rejected and the Minister of justice stated that the blockchain would not replace a notarial deed, this proposition proves that the blockchain and its legal status undoubtedly stirred debate within the government.
Another interesting debate is the legal recognition of smart contracts that are based in the blockchain. These standalone software automatically predefine certain conditions without the need for any human intervention. The advantage of this is that the conditions cannot be modified while the contract is running, thus preventing abuse or contractual fraud. Therefore, the cost of verification, enforcement and arbitration are reduced. This in turn, relates back to the idea of avoiding intervention from a “trusted third party”.
Smarts contracts are software, rather than contracts, and like the blockchain itself, do not possess any legal status. They are not binding on third parties (or at least not yet).
These technical applications of contracts could be applied to many areas: tax (collection and automatic deduction of value-added tax), insurance (traveller compensation system in case of flight delays on the Ethereum platform), real estate (registration of title deeds), health (management of patients’ information), transport (decentralised carpool service) or even online voting (secure system preventing fraud).
In any case, we are still at the beginning of what is likely to become a revolution in the coming decades. All current decisions will influence the future of the blockchain, that of our society and its organisation. Implementation of a legal framework for the blockchain is key and it is the government’s role to provide legislation on the subject.
According to the decision, from now on, anyone wishing to file an opposition must do so via an E-service, therefore fully accepting the Institute’s terms of use regarding the electroning filing of an opposition against a trademark registration as well as the use of E-Procedures. It is no longer possible to file such an opposition by any other means than the E-service.
In short, since May 1st, 2016, the French National Trademark Institute has made the online filing of an opposition to a trademark registration on the INPI website mandatory.
Futhermore, all subsequent exchanges and the submission of observations must be done exclusively via the online service of the Institute.
The legislation of the Republic of Belarus has recently evolved through a law adopted on January 5, 2016. The law will allow Belarusian law to advance its current practices in the field of trademark law. Further opportunities for trademark applicants have also been implemented. The amendment came into force on July 15, 2016.
First and foremost, with the new law, trademark registrations with the National Intellectual Property Center can now be filed not only by companies but also by citizens, including foreign citizens. Indeed, before this law was adopted, it was impossible for a foreigner to register a national Belarusian trademark.
Some of the other significant changes in the law adopted on January 5, 2016, include:
Grounds for refusal of registration
A list of grounds for refusal of registration was added and amended by the law of January 5, 2016. Before the law was enacted, the registration of trademarks exclusively composed of symbols or indications used to designate the following was not authorized:
– kind,
– quality,
– quantity,
– property,
– value of the goods,
– process of their manufacturing or selling.
According to the amendment, registration will now be refused only if the abovementioned symbols or indications are dominant components of the trademark being registered, rather than on grounds of their mere presence.
Also, if a sign is identical or confusingly similar to a design or a plant variety protected in Belarus, and if the goods or services are themselves identical of similar, it is impossible to register such a sign as a trademark.
Integration of the International Classification for goods and services (Nice Classification)
From now on, the trademark registration application must bear reference to the Nice Classification for goods and services. Before the law was adopted on January 5th, 2016, such an indication was optional.
What we have here is clearly a desire for the Republic of Belarus to harmonize its IP law with international law standards.
Restoration of expired time limits
It is now possible to restore a number of expired time limits:
– the time limit for responding to a preliminary examination request;
– the time limit for responding to an expert examination request;
– the time limit for submission of a petition for conducting an expert re-examination;
– the time limit for lodging a complaint with the Court of Appeal.
However, it is only possible to restore the abovementioned time limits within three months of the date of their expiration. In addition, time limits will only be restored in exchange for payment of the restoration fees. Finally, the applicant needs to provide proof of a reasonable justification for missing the deadline.
Additional changes have been introduced by the law adopted on January 5th, 2016, such as the prohibition of voluntary licenses between commercial entities. These amendments have allowed the Republic of Belarus to bridge the gap between its legislation and that of other countries, having signed international conventions such as the Nice Agreement.
A hashtag is a word or phrase (“tag” in English) preceded by a symbol similar to the hash (“hash”), used to thematically classify content on social networks.
In a notice published in the Official Journal of January 23, 2013 , the General Commission of Terminology and Neology defined “hashtag”, or “mot-dièse” in French, as: “A meaningful sequence of characters without spaces starting with # (hash), which indicates a topic of interest and is inserted in a message by the author to facilitate the identification thereof.”
The hashtag was first used on Twitter in August 2007. Technically, the hashtags allow the author to contextualize a publication and consolidate the contents consisting of the same keywords. Therefore, in the same manner as the domain name, the hashtag has become a real communication tool and a significant, intangible asset for companies. Faced with the extensive use of the hashtag, it is necessary that limitations on its use are set and it therefore seems legitimate to question its legal status.
The hashtag and fundamental freedoms
Under French law there is no express provision relating to hashtags. However, if some hashtags are considered illegal such as ” #UnBonJuif”, “#AntiNoir” or more recently ” #JeSuisKouachi”, it falls both within the scope of the Law on the Freedom of the Press of July 29, 1881 on racial defamation offences as well as the recent counter-terrorism law of November 13, 2014 .
Use of such hashtags is unfortunately common in that social networks do not review messages published by users until after they are published and often, only if they are subject to a specific report. This suggests that the derogatory liability, according to which the host of the publication will not be held liable if the latter is not aware of the message before it has been posted (Article 6 I. 2 of the Law of June 21, 2004 regarding Confidence in the Digital Economy ), applies to social networks and cannot be questioned in cases of disputed hashtags. Thus, there is no doubt that a user who shall commit an offence or tort through the use of a hashtag that is provided for by the law could be prosecuted and convicted by the French courts, alone or along with the social network.
However in most cases, the disputed hashtags originate from, or are taken up by persons using a pseudonym, thus making their identification complicated. One can take the example of the hashtag ” #UnBonJuif”, for which Twitter had been served a notice by various associations to take prompt action to remove them and to reveal the identity of the authors of the impugned words. Having faced controversy over the res judicata of the decision on account of the international nature of the social network, in July 2013 the associations finally managed to obtain – through mutual agreement with Twitter – the identification details of the authors of the contentious tweets.
As such, the hashtag which is used as a tool for expression and communication, falls under various criminal and civil law provisions on the protection of fundamental freedoms. Any abuse is therefore legally actionable. Despite numerous requests for the removal of tweets, so far, only Twitter has been subject to very few convictions in France, due to the abusive nature of hashtags. France alone accounts for 87% of requests worldwide.
Considering that a hashtag may enjoy legal protection under intellectual property law is a significant advantage for companies as they could avail themselves of civil and criminal law provisions to protect their trademark and image on social networks. However, no legislation has established the legal framework for this symbol yet or provided for penalties in the event of abusive practices.
Is the hashtag a work of the mind and can it be protected by copyright?
Article L. 112-1 of the Intellectual Property Code provides protection for “all works of the mind, “whatever their kind, form of expression, merit or purpose.” The following article provides a non-exhaustive list of works that can be considered works of the mind. This list allows any new creation to be considered as a work of the mind provided that it fulfills the conditions for copyright which are: originality (the imprint of the author’s personality) and physical layout of the work. It would seem that case law with respect to copyright protection can be transposed to the hashtag. However, the appreciation of originality remains subjective and case law may vary.
The tangent character of the concept of originality contributes to the uncertainty of protecting a title by copyright. A hashtag composed of a single word can hardly be protected by copyright unless it is particularly original.
Moreover, one must dissociate the hashtag symbol from the word or words that follow it. The hashtag symbol does not seem to bring originality in itself inasmuch as it has been trivialized since its first use in 2007. Therefore, the content in its entirety will not necessarily be original only because it has been attached to a word or to a group of words.
Is the hashtag a distinctive symbol or a symbol subject to trademark protection?
As with domain names or usernames, the legal nature of the hashtag is not confirmed. Indeed, the symbol is chosen and used freely and openly on social networks. In order to prevent misuse of their trademark, increasingly, trademark owners are applying for the registration of their trademark or their slogan accompanied by the symbol, “#”. The law is silent on this issue and case law is inconsistent. If it was admitted a few times that a hashtag can be protected by trademark law, it is not automatic and hashtag will only be protected by trademark law provided that they meet the criteria of a trademark which are: to be available, to have distinctive character and to be lawful.
In 2015, there were 1,398 application requests worldwide for the registration of trademarks including a hashtag, among which 159 were in France. Companies register hashtags as trademarks when developing an advertising or marketing campaign and when they want to enjoy legal protection. In the US, the operator T-Mobile USA registered in January 2015 the trademark “# 7NIGHTSTAND CHALLENGE.” At community level, one will note the application for registration of the trademark “#LOVE” by Sony Pictures. In France, the trademark “#CLIENT ADDICT” was applied by Future Telecom on June 6, 2014 and the registration was accepted by the National Institute of Industrial Property.
When registering its trademark, a company protects that trademark against any illegal reproduction or imitation and thus has legal means to fight against competitors who could, using an identical hashtag for their own trademark, generate commercial gains and thus resort to practices of economic parasitism.
In the US, in Fraternity Collection, LLC v Fargnoli, a decision dated March 31, 2015, a designer, after terminating business relations with its manufacturer, used hashtags adopting the manufacturer’s trademark (“#fratcollection” and ” #fraternitycollection”) on Instagram to sell his own creations. The Southern District of Mississippi considered that the use of a competitor’s name or of any of its products on social networks as a hashtag can in some circumstances lead to the consumers being misled.
In addition, companies have the opportunity to buy “sponsored tweets” on Twitter thus allowing them to gain better visibility on the social network. These tweets will indeed be emphasised and will normally be seen by Internet users who use that hashtag. A parallel can be drawn between hashtags used in these tweets and Google AdWords. The CJEU case law tends to consider that the use of a trademark as AdWords can amount to infringement if its use causes prejudice to the functions of the trademark, that is the specific image that the company wants the customers to have in mind.
The hashtag “#Rio2016” widespread on the Internet during the summer Olympic Games of 2016 has notably been subject to conflicts in Europe. Indeed, the German Olympic Committee banned the use of the hashtag to non-Olympic sponsor companies, citing an appeal to counterfeiting and an infringement of their intellectual property rights. However, with reference to the CJEU case law, use of this hashtag can only be prohibited if it causes prejudice to the functions of the trademark. A company is entitled to use this hashtag if it simply wants to support its country in the context of the competition, and no commercial link is established between the Olympic Games and the company (i.e. if the hashtag is not used in connection with the company’s goods and services). The hashtag “#Rio2016” was also subject to discussion in the US to the extent that the Olympic Committee has prohibited the use of the hashtag by non-Olympic companies. Some companies however, responded by confronting the Committee on the grounds of an excessively strict prohibition on social networks and therefore reminding the CJEU of its code of conduct.
If some companies have managed to protect trademarks containing the hashtag symbol, a decision of the Court of Appeal of Paris has nevertheless asserted its secondary character. The French Institut National de la Propriété Industrielle (INPI) also considered that due to its frequent use, the symbol “#” is secondary (CA Paris, December 5, 2014, No. 14/14773). The assessment of a trademark containing a hashtag is therefore made without this symbol, as a traditional trademark.
The United States does not agree with this since the trademark “#” has indeed been registered on November 25, 2014 at the USPTO. The USPTO stated that a trademark which consists wholly or partly of the character “#” or “hashtag” can be registered as a trademark if it indicates the origin of the goods or services of the applicant and provided they meet the traditional criteria of validity of a trademark. However, the California Central District Court ruled against this view in the case of Eksouzian against Albanese on August 7, 2015. The dispute concerned two competitors between whom there was an agreement prohibiting them from using the association of certain words as a trademark to promote products. The judge found that the hashtag was descriptive and as such, could not be considered as a trademark. The registration of a trademark including a hashtag is thus not automatic.
Therefore, if previously the registration of trademarks could result from a preventive exercise on the part of the holder in order to prevent a third party in bad faith from registering a hashtag infringing the trademark, the assessment of the validity of a trademark with a hashtag is now exclusively on the word or expression following the “#”. The best way to protect a hashtag will depend on its intrinsic characteristics. Whether by copyright or trademark law, the mechanisms are however not absolute and the case law remains inconsistent.
Following “@” and “.com” what is the future of “#” ?
While the impact of the Brexit on intellectual property rights is still uncertain, the state of designs is similar to that of trademarks in various ways, but some differences still exist.
The mechanism of the exhaustion of rights applies in the same way to trademarks and designs. The scope of the applicability of the exhaustion mechanism clearly depends on the decision of the United Kingdom to be a party to the EEA or not. Currently, once a good has been put on the EEA market with the consent of the rights holder, the rights relating to the designs are “exhausted”, meaning that the rights holder can no longer oppose its free circulation in the domestic market. Therefore, once the United Kingdom leaves the EU, the principle of the exhaustion of rights will no longer apply to the first goods marketed in the United Kingdom. If the United Kingdom decides not to be a party to the EEA, the government may still decide to apply the principle of international exhaustion, according to which the rights are exhausted when the good has been sold in any country.
While a mechanism of conversion of European trademarks and of RCDs would most certainly be implemented, the consequences are not the same for the European Community trademarks and designs. Such a mechanism does not currently exist for designs.
Furthermore, unlike trademarks, the designs do not involve any consequences in relation to the revocation for non-use.
It is to be noted that national British designs do not provide the same protection as RCDs. In fact, British designs do not protect the product’s decoration. Further, British titles do not have to fulfil the novelty criteria (the criteria is that of originality, meaning that the design must not have been copied or must not be similar).
Finally, a design can be registered in the United Kingdom even though it is functional.
The unregistered community design (UCD) makes it possible to enjoy protection when marketing a design without registering it .
Designs disclosed for the first time on the European Union territory (as of March 6, 2002), enjoy protection status. This protection lasts 3 years from the date that the design was first disclosed on the European Union territory. It is applicable only if the first disclosure occurs on the European Union territory.
Therefore, will a disclosure in the United Kingdom deny protection of unregistered community designs (UCD)?
It is necessary to provide legislation on this subject in order to define the limits of the protection of UCDs in the United Kingdom for the forthcoming years.
Once the exit of the United Kingdom from the European Union is finalised, community designs will no longer cover the United Kingdom. As advised in our previous article relating to trademarks “Brexit: facing the consequences”, if the United Kingdom represents a significant market for your company, it is advisable to register a British design in addition to a RCD.
Dreyfus & associés can assist and advise you on the best strategy to enhance and protect your rights.
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Dreyfus is concerned about protecting your privacy and the Personal Data ("Data"; "Personal Data") it collects and processes for you.
Hence, Dreyfus complies every day with the European Union legislation regarding Data protection and particularly the European General Data Protection Regulation Number 2016/679 of 27 April 2016 (GDPR).
This Privacy Policy is aimed at informing you clearly and comprehensively about how Dreyfus, as Data Controller, collects and uses your Personal Data. In addition, the purpose of this Policy is to inform you about the means at your disposal to control this use and exercise your rights related to the said processing, collection and use of your Personal Data.
This Privacy Policy describes how Dreyfus collects and processes your Personal Data. The collection happens when you visit our Website, when you exchange with Dreyfus by e-mail or post, when exercising our Intellectual Property Attorney and representative roles, when we interact with our clients and fellow practitioners, or on any other occasion when you provide your Personal Data to Dreyfus, in particular when you register for our professional events.
Written by Dreyfus07/12/2016 
Created in 2011, Snapchat is a fast growing social media platform which now counts more than 150 million daily active users across the world while Instagram, founded in 2010, has more than 300 million users. These applications can prove to be effective marketing tools for businesses.
