The age of social media and Internet and e-commerce has seen the rise of various new ways of communicating, not only between individuals but also between brand owners and consumers.  Hashtags are one of the current fads. Hashtags are being used more and more frequently as part of marketing and branding campaigns. An interesting question to consider is whether hashtags can be registered as trade marks. Can they be used to distinguish goods or services?

Before examining these questions from a legal perspective and at the risk of stating what may be obvious to many, it would be useful to look at the history and nature of the hashtag.

In past times the # symbol was commonly used to refer to the word “number” – e.g. “#1”, but since the rise of social media, Twitter in particular, the symbol has acquired a new function. According to Wikipedia, a hashtag is a type of label or metadata tag used on social network and microblogging websites which makes it easier for users to find messages with a particular theme or content. Any combination of unspaced words or characters led by a # symbol is a hashtag and any hashtag, if promoted by enough individuals, can “trend” and attract more individual users to the discussion.

A possible motivation for employing hashtags in marketing campaigns would be to create the impression that the brand name or catch phrase following the # symbol is a “trending” or popular subject and in that way attract attention from consumers.

Coming back to the question about the value of hashtags as trade marks, a quick look at the South African Trade Marks Register reveals that there are a large number of hashtag trade marks on the Register, across a broad range of classes. It is unsurprising that filing of these marks started only a few years ago and that the numbers of hashtag marks filed annually has increased substantially each year.

A fairly common misconception is that adding a # symbol to your brand name or slogan adds to its power or strength as a trade mark and means of carrying a message to consumers of your product or service. This is not necessarily the case from trade mark point of view.

Internationally questions have been raised about whether, given their functional purpose, hashtags can be registered as trade marks. In the United States, for example, the US Patent & Trademark Office added a new section to the Trademark Manual of Examination Procedure dealing specifically with registration of hashtag trade marks. It states that a hashtag may be registrable but only if it functions as an identifier of the source of the applicant’s goods or services.

The function of a trade mark is to distinguish the goods or services of one business from the same or similar goods or services of another. In light of this function, in order to qualify for registration, a trade mark must be distinctive. This means that it cannot consist entirely of words or other features that are common, descriptive, generic or reasonably required for use by other traders in the relevant industry. These principles are formalised primarily in the South African Trade Marks Act and regulations. In South Africa the general principle applicable to registrability of trade marks is subject to one major proviso, namely that a trade mark that would normally not qualify for registration because it is descriptive, common, generic or reasonably required for use by other traders may nonetheless qualify for registration if the applicant can show that the trade mark has been used extensively and that as a result of such use it has acquired a substantial reputation and a secondary meaning amongst consumers.

The question that arises is whether, in the absence of acquired distinctiveness, a trade mark that would normally not qualify for registration can be rendered distinctive simply by the addition of the # symbol or the .co.za domain extension. The existence of trade marks such as #CASH, registered in respect of financial services on the Trade Marks Register suggest that this may be the case.

In my view, though, although trade marks of this nature may be registered they would not necessarily be enforceable against third parties and may therefore have little value. In order to be registrable and, ultimately, enforceable as a trade mark, a hashtag must be distinctive – adding a # symbol to a descriptive phrase is not sufficient to render it suitable for registration as a trade mark, even though that may be the way forward from a marketing perspective.

There are also other potential pitfalls to using and registering hashtags as trade marks. By its nature a trade mark registration is a monopoly granted to the proprietor to use the trade mark in question to the exclusion of all others. The owner may authorise others to use his trade mark, but the right of use is usually subject to strict controls. Conversely, in the context of social media at least, a hashtag is intended to be freely used and disseminated by individual users of social media. In essence, these two principles seem to be at odds with each other and this is often where brand protection and enforcement principles clash with marketing principles and strategies.

One can see the value in using hashtags in marketing campaigns, as these campaigns are generally dynamic and have fairly short life spans and are therefore more suited to being communicated as “trending” topics. Trade marks, on the other hand, are more of a long-term investment. In South Africa it takes between 2 and 3 years from the date of filing for a trade mark to be registered. So by the time your hashtag is registered, it probably isn’t trending anymore...

This is not to say that registering a hashtag trade mark in South Africa will never have value. In cases where the hashtag performs a genuine trade mark function and is intended to do so on more than a short-term basis it should be registered. Although South Africa, unlike the Unites States, does not have specific regulations dealing with registrability of hashtags as trade marks, the usual principles applicable to registrability of trade marks in general would apply.