The use of hashtags, words or phrases with the # symbol, on social media platforms such as Facebook, Twitter and Instagram has made the use of the # symbol as prolific as emoticons, if not more. Technically, hashtags are used to label or tag content such as Twitter posts, Instagram Photos or Facebook status updates to categorise it together with similar content or to make it easier to find. For example, #nye2016 and #illridewithyou. It is also used as a way to comment or to provide an opinion on particular content. Examples include #awkward and #yolo.
The popularity of hashtags and the # symbol has slowly crept into the world of trade marks. In the last couple of years, applications for trade mark registrations for words and phrases with # symbols are gradually increasing. There are various examples of how hashtags are being used as trade marks including promotional events and competitions and referring to marketing campaigns.
As a response to this, IP Australia’s Trade Marks Office has recently updated the Trade Marks Office Manual of Practice and Procedure to provide guidance on how to examine hashtags used as trade marks or ones that include the # symbol.
How Does the Manual Define Hashtags?
The Trade Marks Office Manual of Practice and Procedure is an online document that provides guidelines for the administration of trade mark rights. Trade mark professionals, including examiners and private practitioners, commonly refer to the manual for additional direction on how to apply the Trade Marks Act 1995 in practice, particularly in examination and administration.
Part 22.14.5 of the Manual defines hashtags as:
“an identifier which is added to a social media post or message (such as a tweet) which connects it to a common theme. It typically starts with the # symbol and follows with a word or string of words (with no spaces) that link it to the common theme”.
If not already apparent, it is important to note the difference between a hashtag which includes and starts with the # symbol followed by a word or string of words and the symbol itself which is #.
According to the Manual, the use of the # symbol to indicate that a mark is being used or referred to as a hashtag is descriptive in nature because it is used merely to link posts with a common theme. For this reason, the words or string of words following the # symbol of hashtag trade marks will be the primary element/s considered in an examination.
Capable of Distinguishing
If the words or string of words following the # symbol are descriptive or common in the marketplace, the hashtag mark will not be considered as capable of distinguishing and will likely be objected to under section 41 of the Act. For example #SALE or #GREATCUSTOMERSERVICE are unlikely to be accepted as trade marks.
Hashtag marks that contains words or a string of words that are capable of distinguishing a business, or a product are likely to be accepted. Examples of accepted and registered hashtag trade marks include #CHANGEDESTINY owned by The Procter & Gamble company for cosmetics and skin care preparations and #MOETMOMENT for alcoholic beverages belonging to MHCS.
This is consistent with tests applied to descriptive, laudatory or commonly used trade marks that have been sufficiently used for a period of time. Acceptance and registration will depend on whether the owner can provide evidence demonstrating that the trade mark has acquired secondary meaning which acts as a badge of origin in the marketplace.
The recent update reflects the increasing use of hashtags as trade marks. While the hashtag is a very recent phenomenon, there is nothing new with the legal tests applied to hashtag trade marks. This test has been well established and has consistently been applied to the use of fashionable trade marks such as the use of the prefix ‘e’ and ‘i’ for gadgets, domain names, and phonewords. If you have any questions about trademarking a hashtag, get in touch with our intellectual property lawyers.