Does the use of a hashtag constitute trade mark use? And what are the pitfalls of using a trade mark as part of a hashtag. Alissa Nayanah* provides trade mark tips to avoid potential #PRNightmares.
The hashtag, which was originally created as a tool to search content on social media platforms, has morphed into a cheap and effective marketing tool across most social media channels. It combines a word or phrase and the hash symbol and constitutes a mark under the Trade Marks Act. The hash symbol is a non-distinctive symbol and does not add to the distinctiveness of the hashtag. If the word or phrase that is contained in the hashtag is distinctive when used in relation to goods and services and can distinguish them from those of other traders, then the hashtag could qualify as a trade mark.
Take the hugely successful hashtag #MyCalvins that’s used for the world-famous Calvin Klein underwear. As part of its advertising campaign, Calvin Klein created the hashtag #MyCalvins and then asked Instagram users to post images of themselves wearing underwear bearing the company’s iconic logo.
The distinctive part of the hashtag is the phrase “My Calvins”, which is distinctive when used in relation to underwear. Consumers perceive the phrase “My Calvins” as a badge of origin. The # symbol doesn’t add to the distinctiveness of the mark.
In a nutshell, if the word, phrase or slogan that forms part of the hashtag is distinctive, then the hashtag could qualify as a trade mark, despite the fact that the hashtag also operates as a search tool on social media platforms.
When determining if the use of a hashtag constitutes trade mark use, much depends on the content of the hashtag and the context in which it is used. A hashtag that contains generic or descriptive content such as #CatsOfInstagram, which is used in relation to images of cats posted by users on Instagram, would never constitute a trade mark.
The success of a social media campaign and the hashtag lies in getting as many people as possible to use the hashtag. This is a concept that’s at odds with the general tenet of trade mark law, which is to monopolise trade marks by excluding third parties from using them. Brand owners spend substantial amounts of money to protect their trade marks from being diluted, but where those trade marks are being used as hashtags, the sign of success is if everyone’s using them!
When using a hashtag as part of an advertising campaign, the goal is to get consumers to use it in relation to the ad campaign. However, it’s difficult to control how users use the hashtag on social media or to prevent your hashtag from being used in relation to unrelated content. Trade marks are consequently exposed to the risk of becoming diluted.
If the hashtag incorporates a registered trade mark, it may be possible to institute trade mark infringement proceedings against users who use the hashtag in relation to unrelated content, but in a social media context, this is not always practical. Firstly, it would be massively expensive to go after every user who uses the hashtag in relation to unrelated content. And secondly, such an aggressive approach could result in negative publicity for the brand and brand owner.
As successful as a hashtag can be, it can also result in an epic fail. Take the hashtag #MyNYPD, which was created to foster good relations between the New York Police Department (NYPD) and community. While the hashtag was created with good intentions and to generate positive publicity for the NYPD, it was used by the citizens of New York to demonstrate police brutality at the hands of the NYPD.
This situation is difficult to control because in this scenario people are using the hashtag (which incorporates a trade mark) for purposes of social commentary. In a society such as ours that places huge value on freedom of expression, it would be difficult to stop a hashtag from being used for social commentary purposes. Given the nature of social media and the ease with which content can go viral, it would be difficult to contain such a situation. Taking an aggressive stance to try to shut down a conversation would only generate further negative publicity.
For a hashtag to function as a trademark, the word or phrase that forms part of the hashtag must be distinctive in relation to the goods and services for which it is used. In other words, the hashtag must be used to identify the origin of the goods and services.
If the intention is to use a word or phrase which forms part of the hashtag for longer campaigns that extend beyond the reach of social media, consider registering the word or phrase as a trademark. Trademarks in South Africa currently take two to three years to proceed to registration, so registration should be considered in cases where the campaign will have a longer life span. We recommend registering the word or phrase in the hashtag without the hash symbol, because the hash symbol is non-distinctive. Registering the word or phrase would also provide more options in restraining unwanted use of the hashtag by third parties.
If the intention is to use a new slogan or trademark as a hashtag, consider incorporating more established trademarks as part of the hashtag. This may deter its use for unrelated content.
Consider short social media campaigns that have a specific purpose, such as competitions or the celebration of a specific holiday or event. This provides less opportunity for the hashtag to be hijacked and used for negative commentary. It’s also in keeping with social media trends, which often have a fairly short lifespan.
If you’re venturing into the no-rules terrain of social media, it’s important to understand that the success of a social media campaign hinges on people sharing content and using the hashtag. Brand owners need to respect users’ freedom of expression and come up with unique strategies to put a spin on advertising campaigns that are hijacked or go in a different direction to what was initially intended. Adopting a rigid or aggressive approach may land brand owners in PR hot water!
*Alissa Nayanah is a senior associate at Adams & Adams.