By Anna Spies and Damien MacRae
— Wyke Farms (@wykefarms) September 26, 2014
Everyone loves a good cheddar cheese. This is no less so in the UK, where over 25,000 people each month are entering the “Free Cheese Friday” competition, run by Wyke Farms, to win their slice of the free cheese.
The popularity of this social media campaign has enabled Wyke Farms to register a trade mark for “Free Cheese Friday”. This is an important development for brand owners, who should similarly consider protecting phrases and hashtags used in their social media campaigns.
Wyke Farms has been making cheese in Somerset, UK since 1861. Four years ago, it started running its weekly social media competition, “Free Cheese Friday”. The winner of the Free Cheese Friday competition is selected at random every Friday, winning (no surprises), a minimum of 1 x 300g Wyke Farms Cheddar cheese product. On 13 October, Wyke farms announced that it had obtained a trade mark for “Free Cheese Friday”, on the basis of the popularity of its social media campaign. Wyke Farms has claimed that this it is the first UK brand to register a trade mark linked to a social media campaign.
To be registered as a trade mark in Australia, a mark must be capable of distinguishing the goods and services of a person. Evidence of actual use can be used to show that the trade mark is capable of distinguishing the goods and services of a person. In the UK, the IPO recently accepted the registration of the mark “Free Cheese Friday”, reportedly finding that it had acquired distinctiveness through the use of the trade mark.
The most interesting aspect of the Free Cheese Friday registration is the evidence of use: reportedly, a sizeable proportion of the use of the trademark had been through the hashtag #FreeCheeseFriday. Perhaps this registration represents a shift in the traditional evidence of use. Whereas traditionally, a brand owner might show use of a trade mark on products, promotional material or websites, the use of a hashtag by customers in #FreeCheeseFriday may have been used to demonstrate consumer recognition of the connection between “Free Cheese Friday” and Wyke Farms.
While there are many interesting things that we can draw from #FreeCheeseFriday, here are six quick lessons for brands running social media campaigns:
- If you are considering using your hashtag as a trade mark, make sure it’s distinctive. You are likely to run into problems registering “#cheese” for cheese products as the Trade Marks Office is not likely to accept that it would capable of distinguishing your goods from those of other business selling cheese.
- Have you considered registering the hashtag version of your mark like “#FreeCheeseFriday” as well? As long as your hashtag is sufficiently distinctive and is not being used by others or likely to be used by others, there’s no reason why you can’t trademark one, at least in relation to the goods or services you would like to use the trademark in relation to. While not directly applicable to Australia, the US Patents and Trade Marks Office has already issued guidance on hashtag trademarks (see here). We also have noticed some hashtag trade marks appearing on the Australian Trade Marks Register, such as “HASHTAG UNEARTHED”.
- When planning a social media campaign, you should do some checks beforehand to make sure that the hashtag that you choose for your social media campaign is not already owned by another person as a trade mark.
- Consider purchasing the domain for your social media campaign too, as well as securing the URLs on Twitter, Pinterest, Facebook, Instagram and the like. This will not only help prevent others from cashing in on your campaign but also provide more evidence of use for the Trade Mark Office.
- Make sure it’s not a phrase that others are likely to want to use and that you can in fact can legitimately claim ownership over the mark. Wobble Town Ferries may want to trademark #WTF in relation to water transport services, but the Twitterverse may get their back up over the apparent monopolising of the hashtag #WTF, for obvious reasons. See also the backlash the charity ALSA faced when they proposed trademarking the words “Ice Bucket Challenge”.
- Registering your social media hashtag may help to protect you to avoid a battle over a hashtag, for example where another company also seeks to use the same hashtag in their social media campaign.
The IP Whiteboard regrets to inform excited readers (except our UK readers) that the #FreeCheeseFriday campaign is open to UK residents only.