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Social media is a form of e- communication and a means of interaction, among which sellers share information, ideas and other contents via virtual groups and networks. Social media evolved in the 1990s and the launch of the early social media service was SixDegrees.com and Blogger- a portal for posting any personal blogs. Then, it was followed in 2000s by the other social media platforms such as LinkedIn, Facebook and Twitter. With a population of 138 crores in the year 2020, India is one of the largest and fastest growing markets in the world. Internet penetration rate went up to nearly 45% in 2021 from just 4% in 2007. India ranks second in the world in terms of active internet users. Social media is considered as the most effective marketing tool available and has triggered a strategic paradigm shift. The Indian government had recently established a new media wing in the Ministry of Information and Broadcasting to add all official information under one roof. However, the growth of social media has put forth new challenges in the IP domain. One of the biggest challenges is the enforcement of the IP law in this borderless digital world. Hence, the need to improvise the trademark laws to balance the modern trends like hashtags is the need of the hour.
Property is a chariot of social exchange, not a rampart of egoism. The era of internet and social media platforms have completely changed the way people socialize, communicate worldwide and promulgate. The advancement of technology has led to the free availability of information in the digital sphere making the current situation prone to intellectual property rights infringements. ‘A brand is not what it tells the consumers, it is what the consumers tell each other.’ This clearly shows that the scenario today is very different from television, radio, and newspapers, which aim at specific viewers and is a one-way information flow. Whereas Twitter, Instagram, Facebook, Pirate bay, YouTube, and Myspace are a few examples of popular social networking platforms, where the flow of information is very complex and intertwined. Keeping all these in mind, is there a need to revisit the Indian Trademarks Act of 1999?
[Image Sources : Shutterstock]
There are numerous ways in which trademark infringement occurs in social media platforms but the current buzzing hashtag culture in the social media platform which mirrors the use of “#” sign before a word or a phrase, is still under debate. Hashtag augments the search results to that of a distinct word further reaching out to a huge audience. With time passing by, the number of applications by companies all over the world for the protection of specific hashtags have increased widely since 2010, says a recent research by Clarivate Analytics. Although hashtags seem to be very normal and regular feature that we often use in social media platforms, the sharing sector where it is present can be a challenge for the intellectual property Infringements. The two basic condition required for a hashtag to qualify for trademarks are:
- It should be graphically fit to be seen
- It should differentiate itself from the other products and services.
A “hashtag”, according to section 1202.18 of the US Trademark Manual, is a form of metadata comprising of a word or a phrase preceded with the sign “#.” A trademark or service mark consisting of or including the hash sign (#) or the term HASHTAG is only eligible for registration if it serves as a source identification for the applicant’s goods or services. A mark can be registered with a disclaimer of the expression HASHTAG or the hash symbol in cases where they are separate from other registrable matter. As a result, if a mark includes the hash sign or the phrase HASHTAG in combination with distinctive text for the products or services, the hash symbol or term HASHTAG shall be disclaimed. #smilewithacoke and #cokecanpics for the brand Coca-Cola Company, #McDstories for The McDonalds, and #makeitcount for the company Nike are some of the hashtags which have already been registered in the United States. In the case of Fraternity Collection, LLC v. Fargnoli, when the former employee of plaintiff later became employed by plaintiff’s competitor and began using the hashtags #fratcollection and #fraternitycollection on her social media accounts to endorse her competing fashion designs, the Plaintiff sued her for trademark infringement and breach of the Lanham Act’s prohibitions on misleading advertising. The court opined in an order that “hash-tagging a competitor’s brand name or product in social media posts could, in certain circumstances, deceive consumers. In its verdict, the court directed that using a competitor’s name as a hashtag might be considered trademark infringement.
In UK, there is currently no such specific policy on the systematic registration of hashtags. Registration is likely decided using the same grounds of “distinctive character” as regular word marks. The courts in UK believe that, merely adding the hashtag symbol to a word mark does not appear to improve its chances of being registrable, as the examination will focus on the word itself, and whether it is distinctive and non-descriptive. This is comparable to the registration of domain names as trademarks, where parts like .com or .co.uk are viewed as utterly non-distinctive and are frequently ignored in a later mark. Wyke Farms, who is UK’s one of the largest independent cheese producers, became the first company in the country to successfully register a trademark for its hashtag #freecheesefriday brand campaign on social media in 2014.
As far as the Indian scenario is concerned, the term “hashtag” has not been defined under any law, it is governed under Trademarks Act, 1999. According to Section 2(m), “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof and under Section 2(zb) of the Trademarks Act, 1999, a trademark is two conditions are necessary to qualify a hashtag for trademark filing:
- It must be graphically representable and
- It must distinguish the goods and services of one person from another
From this, it is clear that the first condition is fully qualified as it is an amalgamation of alphanumeric characters that are graphically represented. The issue arises with the second criteria, which is also pivotal for a hashtag to be considered as a trademark. The second criteria is much subjective and there can be variations as to what shall be considered as distinctive and not generic. Hence, the hashtag mark needs to pass the conditions of distinctiveness in order to gain trademark protection in India.
Therefore, it is crystal clear from the above analysis of the three countries that hashtags are eligible to be registered as trademarks and arbitrary use of it leads to trademark infringements but, there have been no specific laws to deal with the buzzing hashtag culture in our own country, India. It is only certain precedents and the existing laws of the act that govern the cases relating to trademark infringement in social media. This itself questions the adequacy of the laws for the growing technological advancements in India. But, it is vital to know that use of hashtags in social media or Infringement through social media in the growing digital era as a whole is a very complicated aspect that must be monitored by experts and expressly mentioned in the act through an amendment to avoid confusions of the court and to meet the ends of justice. While it is important to have enforcement mechanisms in place, it is equally important that certain measures have to be taken that has to be reasonable and proportionate. For instance, innocent infringement by a misguided fan or loyal customer should be dealt with softly, and not by a lawsuit. Whereas, negative publicity travels through social media rapidly, measured response is always recommended. Moreover, instances involving counterfeiting or impersonation must still be dealt with strongly and legal actions should be taken.
Although the three pillars of democracy in India – the legislature, the executive, the judiciary are aware of the problems posed by the fast growth of the social media, uncertainty remains as to whether the current IP laws and enforcement techniques can sufficiently address the ever-evolving legal issues pertaining to the use of brand names in social networking sites through hashtags. The laws and guidelines have been the subject of severe criticism in the name of internet freedom. Further, jurisprudence in this realm is yet to be evolved globally.
Author: Abhipsa Mohapatra, a student of KIIT Law School, Bhubaneswar, Odisha, in case of any queries please contact/write back to us via email to firstname.lastname@example.org or at Khurana & Khurana, Advocates and IP Attorney.
* U.S. Patent & Trademark Office, Trademark Manual of Examining Procedure (TMEP) § 1202.18 (9th ed. Apr. 2016)
* Fraternity Collection, LLC v. Fargnoli, 3:13-CV-664-CWR-FKB.
* Mayuri Patel and Subhasis Saha, Trademark Issues in Digital Era, 13 Journal of Intellectual Property Rights 118, 125-126 (2008).
* Why hashtag trademarks should stay? By Prashant Dayal
* CA Brijesh and Anukriti Pareek, Social Media and IP Infringement in India: Preparing for action, World Trademark Review 38, 38-40 (2014)