“Brat summer”, “coquette aesthetic”, “strawberry milk makeup”: social media trends can achieve viral status essentially overnight. However, their popularity is frequently short-lived. As a result, brands will often quickly devise marketing strategies incorporating these trends and catchphrases as soon as possible to capitalise off the current popularity and appeal to consumers.

Whether the creator of a trend should seek trade mark protection in respect of such trends is less clear. Recently, TikTok creator, Jools Lebron, who coined the viral “very demure…very mindful” trend, uploaded a (now deleted) video saddened that a third party had recently filed a US trade mark application for the phrase.

What Can Be Done When a Third Party Files an Application for Your Brand

Like the United States, Australia is a “first to use” jurisdiction. In Australia, a trade mark application must first be examined to determine whether it meets the registrability requirements of the Trades Marks Act 1995 (Cth) (Act). If the trade mark is accepted, it will then be published for two months, during which any person can formally object to the registration of the mark by lodging a notice of intention to oppose with IP Australia. The opposition process enables a person to make out a case as to why the trade mark should not be registered under the grounds specified in the Act.

One ground of opposition is that the applicant is not the owner of the trade mark.¹ Under this ground, an opponent must establish that they were the first to use the mark in relation to the same goods/services that have been filed. This may prove difficult where a trend is so new that there has been no opportunity to apply the phrase to goods or services yet.

Another ground of opposition is that the application was made in bad faith.² Circumstances that may invoke bad faith include “manifestations of blocking or holding to ransom the party which is, at least in conscience, entitled to a mark”.³ This may arise where an applicant deliberately applies to register a mark with no intention to use it in order to prevent another party from registering the mark or to force the other party into paying to use the mark. There is a high threshold to establish bad faith and the onus will be on the creator of a trend to establish that the applicant’s conduct falls short of standards of acceptable commercial behaviour.⁴

Lebron’s situation highlights that applying for a trade mark swiftly, if there is an intention to use the trend commercially, can help to prevent the need for timely and costly trade mark opposition. Further, trade mark registration will assist in a creator’s ability to capitalise off their trend within the fast-moving social media environment.

Should Social Media Trends Even Be Able To Be Registered?

Trade mark registrations for online trends are not uncommon. Australian trade mark registrations currently exist for “Clean Girl” in relation to hygiene wipes and deodorant, and “Hot Girl Summer” for alcoholic beverages. Some other notable US trade mark applications and registrations that use phrases that have previously trended on social media include:

• “Face Card Never Declines“
• “Gaslight Gatekeep Girlboss“
• “Slay Queen“
• “Delulu“
• “Golden Retriever Energy“
• “Glazed Donut Nails“

Due to the transient nature of some of these phrases, trade mark registrations that are only used in the short term may eventually become vulnerable to non-use applications if not used on an ongoing basis. Alternatively, some phrases may be so widely used that they become a part of everyday vocabulary and generic terms. Generic terms lose their ability to distinguish a particular person’s goods or services. However, if such trade marks are registered and not challenged to be removed from the register, other brands operating in the similar sectors should be very mindful to ensure that any use is limited to a descriptive use and does not act as a badge of origin.

Takeaways

Many entities have already started using “very demure…very mindful…” and other viral TikTok phrases in their marketing. Should trade mark applications for these phrases proceed to registration, entities may be liable for trade mark infringement in circumstances where they are using the phrase in respect of similar goods or services. Ultimately, there is a fine line between using current trends to market goods or services and trade mark infringement.

As with all taglines and catchy phrases, businesses should seek professional advice as to the risks in adopting them in their marketing strategy and whether to consider trade mark registrations.

Footnotes

¹ Trade Marks Act 1995 (Cth) s 58.
² Ibid s 62A.
³ Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 201 FCR 565 at [163].
⁴ Ibid at [165].