Hashtags are used on social media platforms including Instagram, Facebook and Twitter as a method to categorise messages.
They include brands, taglines, slogans, television shows and social cause movements. A hashtag search gives users the ability to search and view content in real time.
The increased use of hashtags in social media marketing to attract and engage consumers online raises thought provoking questions for marketing and intellectual property law around the ownership of hashtags.
Quick off the Mark® ’s opinion is that there will be more businesses seeking trademark protection for their hashtags as part of their overall strategy to protect their brand.
The difference between trademark registrations for a hashtag and a traditional trademark registration
While a traditional trademark is intended to be used by the trademark owner only (or by persons under license from the trademark owner), the trademark owner and social media users can both use a hashtag trademark.
The trademark owner of course wants consumers and social media users to become involved in the use of a hashtag ‘trademark’.
In many cases the trademark owner will have been active in using social media to increase awareness of the hashtag.
Hashtag trademark registrations should follow the same rules as other trademarks
Section 17 of the Trade Marks Act 1995 defines a trademark as follows:
“A trademark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.”
Therefore, hashtags should be registrable as trademarks if they meet this definition; where the hashtag may act as a badge of origin in the marketplace for the owner’s services or goods.
This means that the character strings following the ‘#’ symbol would need to follow the usual rules for registration of trademarks. A distinctive word combined with the ‘#’ symbol is more likely to be registrable, subject to no existing prior third party rights. However, a descriptive word combined with the ‘#’ symbol, is unlikely to be registrable.
How to register a trademark for a #hashtag in Australia
Recently IP Australia updated the Australian Trade Marks Office Manual of Practice and Procedure with a definition for a hashtag and to discuss the registrability of hashtag trademarks.
As discussed above, a hashtag trademark should be registered as an Australian mark, when the words behind the # symbol identify your product or service and serves to differentiate your business from other businesses. Applicants should consider whether it is absolutely necessary to register their hashtag trademarks.
For example, with Quick Off the Mark® already registered as a trademark in Australia it would not be necessary for us to also register “#Quickoffthemark” unless we are actively using this hashtag to identify our services in the marketplace.
If a hashtag has become so widely used and because of that use serves as a ‘trade origin’ for the trademark applicant’s goods or services or if it is more than a social media-marketing tool and is recognised as a brand identifier it is possible that it could be considered trademark material.
It is Quick off the Mark® ’s opinion that a hashtag (where the # mark is followed by a word or words) could fall within the definition of ‘Trade Mark’ as shown above.
Should a trademark consisting of the # symbol be followed by non-distinctive or descriptive elements, it will most likely not be registrable unless the applicant can demonstrate the hashtag has acquired a secondary meaning and serves as a badge of origin because of the extensive use made of the hashtag.
IP Australia has indicated examples of difficult hashtag trade marks like this could include:
- #Melbourne: locations should be available for other businesses to use.
- #playnetball: a sporting service
- #findadate: a dating service
- #landscapegardener: a gardening service
While Australian courts have not considered hashtag trademark registration yet, Quick off the Mark® considers it possible that a corresponding ruling with domain name trademarks may be an indication of what could happen.
When a domain name forms an essential part of a brand, it is possible for a business to trademark a domain name. However, the distinctive feature of the trademark doesn’t apply to the top-level domain (e.g. .com.au or .com).
The name of the website must be generally capable of distinguishing the goods or services for the trademark for to be registered (e.g. Apple.com), a domain name such as “playnetball.com.au” would be challenging to register as a trademark, just as it would be in the hashtag examples above.
Infringing a protected #hashtag on social media
Registering a hashtag trademark will not necessarily mean that businesses will be able to prevent anyone from using their trademark on social media, particularly as trademark rights are afforded to the owner in the country of registration. You can read more about country of registration here.
For infringement to be established, Quick off the Mark® believes that brands would need to show the competitor had used as a trademark a substantially identical or deceptively similar sign in relation to the same or closely related goods or services (or in relation to unrelated goods or services if the registered trademark is well known).
A key issue likely to arise is whether using a hashtag on social media is use as a trademark – that is as a badge of origin to distinguish the brand’s goods or services. In Australia, if it is not use “as a trademark” in this manner then it is not infringement.
Can Copyright protect a hashtag in Australia?
In Australia there has been speculation about whether copyright law offers protection to hashtags. While copyright protection extends automatically to artistic, musical, literary and dramatic works, in most cases hashtags may be considered too insubstantial and short to constitute original ‘literary’ works.
It is Quick off the Mark® ’s opinion that hashtags are unlikely to attract copyright protection. Australian courts have not had to directly consider the question of hashtags, but they have addressed the issue of advertising slogans.
It is possible that hashtags will be considered to be similar to slogans; memorable, short and snappy.
In 2003 the courts considered advertising slogans ‘Somewhere in the Whitsundays’ and ‘the Resort that Offers Precious Little’, in Sullivan V FNH Investments Pty Ltd t/as Palm Bay Hideaway [FCA 323). They found that the advertising slogans did not demonstrate the necessary degree of effort, judgement and skill to be original literary works where copyright could exist.
Comparable decisions overseas and in Australia reinforce Quick off the Mark® ‘s view that copyright is unlikely to be recognised in hashtags in the majority of cases.
If copyright protection does not exist, a company can look to trademark law to protect their hashtags. The Copyright Council in Australia refers creators and authors to the Trade Marks Office for protection of names, titles and slogans and we suspect the same will become true for hashtags.
Protect your #brand
Trademark law is playing ‘catch up’ with the social media marketing hashtag phenomenon. Quick Off the Mark® believes that as hashtags become more significant in the marketing and advertising for brands, it would be wise for businesses to consider whether a hashtag can be registered for a trademark.
Contact Quick Off the Mark® to discuss your hashtag trademark questions or requirements.
Quick Off the Mark is a division of Mark My Words Trademark Services Pty Ltd (MMW). MMW was founded in 2011 and is headed by Jacqui Pryor, a registered trade marks attorney with more than 16 years experience.
In 2015 MMW acquired Quick Off the Mark®, which is a fast and affordable Australian trademark registration service. Quick Off the Mark® offers fixed fees that are affordable to help Australian businesses register their trademarks.
The advice provided in this blog is general advice only. It has been prepared without taking into account your business objectives, legal situation or needs. Before acting on this advice you should consider the appropriateness of the advice, having regard to your own objectives, legal situation and needs