Guest Book Review: Hashtags and Trade Marks - A Comparative Legal Approach

This Book Review of “Hashtags and Trade Marks - A Comparative Legal Approach”, written by Nazanin Aslani, is kindly provided by Katfriend Victoria Thüsing (Stockholm University). Here is what Victoria has to say: 

Nazanin Aslani, visiting lecturer at the Dickson Poon School of Law, King's College London, UK, and lawyer in New York, USA, has devoted her book, 'Hashtags and Trade Marks - A Comparative Legal Approach', to the exciting legal aspects of hashtags as trade marks in the EU, Germany, and the USA. This Katfriend had the great pleasure of reading the book and would like to use this review to encourage all IP friends to read up on the topic of hashtags (and beyond). #RecommendedReading

Objectives of the work

Aslani herself describes the book as having four objectives: (1) to explore the use and understanding of hashtags, (2) to provide an overview of the registration and protection of hashtag marks, (3) to evaluate control mechanisms for hashtag marks, and (4) to determine the scope of hashtag marks. The overall aim is to determine whether the balance between freedom of expression and protection of competition in the treatment of hashtags as trade marks is currently appropriate.

Structure and content of the book

This Katfriend finds that the book, which is divided into three parts with a total of six chapters, fulfils the intended objectives.

Part I - #SettingTheStage: foundations, ancestry and taxonomy of hashtags provide a clear and concise overview of the historical and practical background to the study. In this context, Chapter 2 examines the origins and different meanings of the hashtag symbol. The author presents a new taxonomy of hashtags and shows how diverse the functions of hashtags are. They go far beyond their original function as an organisational tool. Today, they also encompass marketing, communication, and activism aspects. The book shows how important it is to have a deeper understanding of the functions of hashtags. This is because Aslani convincingly demonstrates throughout the book that an inadequate understanding of the functions of hashtags often leads to misinterpretations by trade mark offices and courts. This in turn has led to inconsistent decisions. 

Part II - Navigating the hashtag legal landscape: in-depth analysis then deals with the comparative law analysis. 

In this regard, Chapter 3 addresses the registration of hashtags as trade marks. It discusses, in particular, the challenges in terms of functionality, distinctiveness and the single source requirement. It is suggested that regulation of hashtag marks should best take place at the registration level. The chapter reveals difficulties and shortcomings in the current processes, both in the US and Germany, and it sets out a clear case for improvement, including specific grounds for refusal and higher fees. 

Chapter 4 analyses the problem of trade mark infringements and the scope of protection of hashtag marks. It is clear that overly broad trade mark protection can have negative consequences for competition and freedom of expression. In the USA, recent court decisions have extended trade mark protection, which has led to an impairment of the interests of competitors and consumers. In Germany, however, a stricter infringement analysis is undertaken. Nevertheless, the author notes that there is an increasing tendency to interpret the use of hashtags by third parties as an impairment of the trade mark function.

In Chapter 5, Aslani confidently discusses the limits of the scope of hashtag marks and available defences as well as their practical consequences. She submits that, at its core, both in the US and in Germany, it will come down to the question of when the use of hashtag marks indicates a commercial connection between the trade mark owner and the third party. Aslani's analysis shows that US courts have often (wrongly) assumed such a connection in their case-by-case examinations. In contrast, EU and German courts adopt a more conservative approach. Overall, the author advocates a general application of the fair use defence.

In the concluding Part III - Closing arguments: reaching a conclusion, the sixth chapter provides a clear summary of the previous analyses and presents a series of concrete consequences and suggestions for the future of the hashtag mark.

#RecommendedReading

This book is a must-read for anyone interested in the issues of the digital age from a trade mark law perspective, but also for those who want to engage with the importance of fundamental rights, such as freedom of expression, in trade mark law. The book offers not only a discussion of legal issues in the context of hashtags and trade marks, but also an examination of the increasingly important requirement of a fair balance between conflicting interests and rights in trade mark law against the background of a topical issue in the digital world. Furthermore, the book offers approaches for dealing with unconventional

trade marks such as colour or sound marks.

The practical approaches that 'Hashtags and Trade Marks' offers in addition to the technical analysis are also noteworthy. This makes the book interesting for academics, practitioners and policy makers alike.

Details

Edward Elgar Publishing

Available as hardcover and eBook

ISBN (hardcover): 978 1 03531 660 1; (eBook) 978 1 03531 661 8

282 pages