Your business runs on a campaign hashtag. The coffee shop Bean Brothers offers a free coffee to anyone who posts #beanbrotherstuesday, and the tag now shows up in hundreds of customer posts a week. Then a rival café starts using the same tag in its own promotion, and you wonder whether you should have locked it down. You can register a hashtag as a trade mark in Australia. Whether you should is a different question, and the answer depends less on how popular the tag is today than on what the words behind the # actually do for your brand.
Your options, and what each one protects
One option is to file a trade mark application for the hashtag itself, exactly as it appears, including the # symbol. A second is to do nothing new, because you may already own a trade mark for the words behind the #. If your business name is registered, a tag that is simply your name or slogan with a hash in front of it is likely covered by that registration, and a separate filing adds little. A third option is to rely on unregistered protection, such as the law of passing off or the misleading conduct provisions of the Australian Consumer Law (Cth), but those require you to prove reputation and likely confusion, which is harder and more expensive than enforcing a registered mark.
Before weighing the options, three things are worth understanding. First, a hashtag trade mark is not a special category of mark. It is an ordinary word or phrase mark that happens to include the # symbol, and it is examined under the same rules as any other mark. Second, the # symbol itself is descriptive of the tag's function of grouping social media posts, so examiners focus on the words behind it. You cannot register the symbol alone, and you cannot register a purely generic tag. Third, registration does not stop your customers tagging you in their posts, and it does not stop people searching for the topic. It gives you rights against someone using the tag as a badge for their own competing goods or services.
What to weigh up before you file
Does the phrase behind the # distinguish your business?
Under s 17 of the Trade Marks Act 1995 (Cth) (the Act), a trade mark is a sign used, or intended to be used, to distinguish your goods or services from those of anyone else. A sign is defined broadly and includes words, letters, names, numbers, logos, colours, sounds and combinations of these. That definition is the whole test in miniature: the tag must point to you, and to you alone, in the course of trade.
Section 41 of the Act then does the practical work. An application must be rejected if the trade mark is not capable of distinguishing the goods or services it covers, and a mark that is merely descriptive of the kind, quality or purpose of those goods is not inherently adapted to distinguish them. IP Australia's Trade Marks Office Manual of Practice and Procedure, updated in 2016 to include guidance on hashtags, applies the same logic to the # symbol: it is descriptive of the tag's indexing function, so the words behind it must identify your product or service and set your business apart from other traders. The US patent office takes the same view, with its examination manual providing that a mark containing or consisting of a hashtag is registrable only if it functions as an identifier of the source of the goods or services.
Ask yourself three questions about the phrase behind the #:
- Does it identify your offer? The phrase should name or evoke your product, service or brand.
- Is it descriptive or generic? #coffee will not be registered for a café, because every other café legitimately wants to use it. #beanbrotherstuesday is different, because it points to one business.
- Is it already protected? If the words behind the # are your registered trade mark, the hashtag version may add nothing.
How will the tag actually be used in trade?
A registered trade mark is infringed, under s 120 of the Act, when someone uses as a trade mark a sign that is substantially identical with, or deceptively similar to, your mark, in relation to the goods or services for which it is registered or closely related goods or services. Two features of that test matter for hashtags.
First, the infringing use must be use as a trade mark. A customer posting a photo with your tag, or a reviewer mentioning it, is not necessarily using it as a badge of origin for their own goods, and s 122 of the Act provides defences for good faith descriptive use. Second, the protection is tied to the goods and services you nominated at filing. A tag registered for café services protects you against a rival café adopting it, but may not reach a business in a completely different industry.
Hashtags also invert the normal logic of trade marks. With a conventional mark you want to stop others using it. With a campaign hashtag, your whole strategy depends on customers, fans and influencers using it freely and spreading it. Registration is less about stopping the crowd and more about stopping a competitor from adopting the tag as its own badge:
- Registered tag: you can object to a competitor using the tag, or something deceptively similar to it, as a badge for competing goods or services, and you can licence the tag to partners.
- No registration: you are left with passing off or consumer law, which require you to prove reputation, misrepresentation and likely damage, and which are slower and more expensive to run.
Who coined the tag?
A trade mark belongs to the person who uses it to distinguish their goods or services. If your marketing team created the tag and you have used it consistently since, you are in a strong position. If the tag grew organically, or was started by a customer, an influencer or the community, claiming it is far harder, and someone who used it before you may hold earlier rights. The Trade Marks Office Manual lists examples of ambiguous cases, and your tag may sit in a grey zone until the facts of its origin are examined. Before filing, a clearance search of the Australian Trade Mark Register is essential, and it needs to look beyond identical tags to deceptively similar ones, because IP Australia will refuse an application that conflicts with an earlier mark. Keep a record of when the tag was first used and by whom, because that record is what you will rely on if the application is opposed.
How long will the tag stay valuable?
Registration runs for 10 years from the filing date under s 72 of the Act, and it can be renewed in 10-year blocks. Because registration takes effect from the filing date, the day you file sets your priority against anyone who adopts the same tag later, so if you are going to file, filing early matters. The uncomfortable fact about hashtags is that most of them are short-lived. A tag built around a single campaign or event can be forgotten within a season, possibly before registration is even granted. IP Australia advises that the process takes at least seven months from filing and costs a minimum of $250 in application fees. If the phrase behind the # is your brand name or a slogan you intend to use for years, the 10-year horizon makes sense. If it is the flavour of the month, you may be paying renewal fees on a mark nobody uses. There is also a risk at the other end: if a tag becomes so widely used that it no longer points to your business, its value as a mark is diluted, and that dilution is hard to reverse.
What does it cost, and what do you get for it?
Beyond the government fees, you will typically pay per class of goods or services, so a filing covering both goods and services costs more. On top of that are the costs of a proper clearance search, of preparing and filing the application, and of responding if the examiner raises objections. If you have used the tag extensively, evidence of use can overcome a distinctiveness objection, but assembling that evidence takes time and care.
In return you get a registered right that is presumed valid, that you can enforce without proving your reputation from scratch, and that you can licence or assign. Brands treat campaign tags as real assets. Coca-Cola filed US applications for #smilewithacoke and #cokecanpics in late 2014, and the filings were reported around the world. For a small business the question is whether your tag is a comparable asset or a passing trend.
How an Artificer Legal trade mark lawyer helps you decide
The decision to file, or not to file, is a legal judgement as much as a commercial one, and that is where a trade mark lawyer earns their fee. An Artificer Legal practitioner would start by stress-testing the two assumptions that most often sink hashtag applications: that the tag is distinctive enough to clear s 41 of the Act, and that it will still be used in five years. They would run and interpret a clearance search of the register, including looking for deceptively similar marks and earlier common law users, and advise on which classes of goods or services the application should cover. If you decide to file, they draft the specification, lodge the application and handle examination reports, including preparing evidence of use if the examiner objects to distinctiveness. If a competitor adopts your tag, they can assess whether that use falls within s 120, or whether your existing word mark, passing off or the Australian Consumer Law gives you a better route. And if the analysis says registration is not worth it, they will tell you, and help you protect the brand through other means, such as website terms of use that govern how visitors engage with your social media.
Ask whether the tag will still be your brand in five years
The question that takes the most effort to answer honestly is not whether a hashtag can be registered. Almost any invented, non-descriptive phrase can be. The harder question is whether the words behind the # are a genuine badge of origin: distinctive, coined by you, and still in use in five years. That is the test the registrar applies, and it is the test the market enforces, because a tag that does not point to you is a tag you cannot defend.
Hashtags are registrable in Australia, and both IP Australia and the US patent office treat the # symbol as descriptive, leaving the words behind it to do the distinguishing work. Weigh the tag's distinctiveness, who coined it, how it is used in trade, how long it will stay valuable and what registration would actually buy you. On most of those factors a trade mark lawyer can give you a clearer answer in an hour than a week of reading, and if you decide to file, the same advice protects the application from the objections that sink most hashtag marks.