Social media has transformed the ‘hash’ symbol (#) from a mere symbol key into a phenomenon of its own. Yet the addition of the # symbol before a word has not been so simple in the IP world and has many potential implications.
For the uninitiated, let’s have a look at the hashtag’s capability. First, the hashtag operates as a virtual index. When combined with a word or phrase, the hashtag enables a topic to be accessed by anyone searching for it, for example, #BreakingBad, #MileyCyrus or #AFL. If we were searching for posts on Twitter today about IP from around the world, we would simply search #IP.
The hashtag has also morphed into a tagline, signalling a slogan or witticism. For instance, the US Government has used Smokey Bear to teach generations how to stop wildfires. Now on social media, children are being taught #OnlyYou can stop wildfires. And to understand the
context to #SmokeyBearHug, see the ad here.
In the online world, hashtags are an important tool for advertising and promotion, as they can be used in conjunction with a company or brand name or a trade mark, such as #coke. Yet the problem with this is the ease by which others may refer to this name or trade mark without endorsement from the company, thus appearing as a search result for everyone to see, irrespective of source. When we searched for #coke on Instagram, over 2 million posts appeared. Only a proportion of these posts will be ‘authorised’, and they will be aggregated with content which might be critical, approving or even misleading. The prospect of harm to the goodwill of the company or brand name is apparent. In the pre-hashtag world, whilst a person would have been able to post the word ‘Coke’ on a post or photograph, this would not operate as a searchable term and would therefore only be viewable by friends or followers of the poster. The issue now is one of scale and lack of control, as an attribute of hashtags is that they are user generated, limited only by one’s imagination (cf. the Google search engine algorithm).
An issue arises as to whether a hashtag can be trade marked. Under Australian law, as a symbol, the hashtag could certainly satisfy the requirement under section 17 of the Trade Marks Act 1995 (Cth) to ‘distinguish goods and services’. The question is really whether it is to be used as a badge of origin, or as a descriptive key. As with all things, it depends on context.
Let’s consider the scenario where a user seeks to trade mark #Coke1. Is this deceptively similar to the trade mark Coke? That might well be the case. Indeed, the use of the hashtag might be considered insufficient to operate as a distinguishing device given its cataloguing functionality in the social media world.
The principles which apply when trade marking a domain name offer a useful comparison. A domain name combines an identifier, such as a trade mark or company name, with a standard address code material, such as “.com” or “.au”. Given the common inclusion of these terms, according to IP Australia it is the identifier itself that is assessed in determining whether the domain name is inherently adapted to distinguish for trade mark purposes, rather than “.com” or “.au”. Yet, the Federal Court recently ruled in REA Group Ltd v Real Estate 1 Ltd  FCA 559 that the distinguishing feature of the trade mark in that case was the domain name “realestate.com.au” in its entirety (see our previous post here). This was due to the significant degree of customer recognition of the realestate.com.au brand.
Let’s consider a slightly different scenario. The hashtag is a fairly rudimentary cataloguing system. Therefore, it is not until one looks at the results of a search for #apple that one can discern whether the content is about the new Apple iPhone or, well, just an apple. [Ed: Supporters of the AFL Club, Geelong Cats, will soon appreciate this problem when searching for #cats on Twitter.] In light of this, how might Apple fare if it sought to trade mark #apple? We will leave that one for your reflection!
A final scenario concerns the potential applicability of the law in relation to sponsored links, when it comes to use of the hashtag. In the case of Google Inc v ACCC  HCA 1, by searching “Harvey World Travel” the user was confronted with advertisements for its competitor STA Travel, due to the latter choosing “Harvey World Travel” as a trigger term from Google’s Adwords service. Had STA Travel’s Twitter posts been tagged #HarveyWorldTravel (which might be an odd way to use up 18 characters of your 140 character limit…), then similar considerations might apply.
Finally, it is interesting that the # function has not been commoditised by Twitter (yet!), the source from where hashtags first exploded. Whilst Twitter allows businesses to promote trends in order to gain exposure, and numerous businesses have bought into the trend with various campaigns such as Coke’s “#shareacoke” campaign and McDonald’s #McDStories campaign, it is a surprise that the hashtag has remained free to roam cyberspace.
Some of these questions might well face the courts in the near future as the online world continues to challenge the boundaries of the law. #watchthisspace!
Mandy Milner is a law student at Monash University who will be undertaking a Seasonal Clerkship at King & Wood Mallesons in June 2014. A passionate IP enthusiast, Mandy recently completed her Honours Thesis on the tension between the right to privacy, copyright and freedom of expression in relation to photographs in the world of Facebook!