The hashtag is a common tool companies use to connect with consumers via social media and gain brand recognition in a crowded, competitive market.
IP Australia’s Trade Marks Examiners Manual defines hashtags as an ‘identifier used in social media posts to connect them to a common theme. Since their first appearance on Twitter in 2009, hashtags have increased in prominence across many platforms and offer brands a way to distinguish their products from their competitors. Are there any legal protections available to companies wishing to protect the use of hashtags? And to what extent can hashtags support pre-existing trade marks? Although this is a developing area, in many instances hashtags have become increasingly accepted as a valuable aspect of any brand’s intellectual property. IP Legal experts Sheree Hollender and Matt Keevers consider in this piece, how companies can add hashtags to their IP portfolio ‘tool kit’, as well as the current limitations associated with hashtags.
Registering a hashtag trade mark
The Australian Trade Marks Act states that ‘a trade mark 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’. This covers words, logos or slogans that identify a company’s products and/or services. When registering a trade mark, the # portion of the hashtag is generally considered non-trade mark material, in the same way domain names (.com or .com.au for example) are not part of a registered trade mark. The words used after “#” must therefore be capable of distinguishing the brand’s goods or services, or a trade mark cannot be registered.
Just a Lidl #hashtag
In the Australian Trade Marks Office decision Lidl Stiftung & Co. KG  ATMO 156 the registration of a trade mark incorporating a hashtag was considered and provides a useful framework for brands who might be considering a similar application.
Well-known discount grocery and supermarket chain, Lidl (which has stores across Europe and the US), applied to extend protection in Australia for its internationally registered ‘#SANTACLARA’ trade mark. After a Trade Mark Examiner initially refused the application, Lidl sought a review of this decision. In its written submissions, Lidl claimed that the trade mark differed from the words ‘SANTA CLARA’, as it removed the space between the words and added a hashtag. The Hearing Officer however agreed with the Examiner’s finding that the hashtag was simply a social media identifier and did not add to the mark’s overall distinctiveness. Relevant consideration was only given to the words following the hashtag, and the removal of the space between the words ‘Santa Clara’ did not add to the marks’ distinctiveness (as it was likely to be read as ‘Santa Clara)’.
The decision in Lidl demonstrates that hashtags cannot counter an otherwise ineligible trade mark if the hashtag content is not distinctive.
Using trade marks as hashtag
When businesses use a trade mark in hashtag form, its function as a marketing tool encourages the public to engage with and use the mark. This differs from the normal use of a trade mark as an exclusive way for brands to advertise goods or services. There are some pitfalls surrounding the use of hashtags as a trade mark that companies should be aware of.
The trade mark owner must use (or intend to use) the trade mark with regard to the goods or services to which it relates. Non-use of the trade mark can lead to removal of the trade mark from the register and the protection once granted, lost. The unique nature of hashtags presents interesting legal challenges. In Taronga Zoo’s opposition to the trade mark registration ‘SYDNEY ZOO’, one of the issues considered was whether Taronga Zoo was known by the term ‘Sydney Zoo’ and its use of hashtags was taken into account.
No room for two at the zoo
Taronga had been the only zoo operator in Sydney for over 50 years. Although Taronga produced evidence that it was generally perceived by the public as Sydney Zoo, it was unable to show that it had used the term as a trade mark. Taronga produced numerous Instagram posts in relation to pictures taken at Taronga Zoo, which incorporated the hashtag ‘#sydneyzoo’. However, the Hearings Officer determined this did not amount to use of a sign to distinguish the goods or services provided by Taronga from those provided by anyone else.
The Taronga opposition demonstrates the need for brands to use trade mark hashtags just as they would a typical slogan or name. If a hashtag does not distinguish the company’s goods or services, there is a strong possibility that the trade will be removed for non-use.
Can hashtag use infringe another trade mark?
Utilising hashtags to promote goods or services carries with it the danger of trade mark infringement and vulnerability to legal proceedings. Infringement occurs when a person uses a sign as a trade mark that is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered, that are of the same description or closely related. If a company uses another party’s registered trade mark as a hashtag to promote its own goods or services, this may be sufficient grounds for a trade mark infringement claim. A string of recent cases have arisen in the US involving allegations that hashtag usage constitutes trade mark infringement; and we expect Australian courts will consider the issue in the near future.
The prevalence of hashtags is continuing to rise as companies connect with their consumers via social media. It is important however, to be aware that simply adding a hashtag to a non-distinctive mark, will be insufficient to register the mark.
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Note* - This article is part of a series focussed on various online IP intricacies, the other instalments can be found in ‘related content’ below.
Sheree Hollender - Lawyer