Can # Hashtags be protected as Intellectual Property in India?
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In an ever-evolving era of digitization and mobile telephony, social media has become a quintessential platform for business development and marketing. Companies and stakeholders swear upon the dependency of businesses on social media marketing in the present times. Businesses are jumping on the band-wagon of social networking websites like Twitter, Facebook, Instagram, etc. for increasing their outreach to prospective consumers around the world in ways, one more innovative than the other.
One such way is the usage of hashtags (#) to coin a new word or expression which can potentially connect large number of people regardless of boundaries on the basis of their feelings for their favorite brands. Examples may be found from the successful publicity campaigns of # ShareACoke by Coca-Cola ,# ShotOniPhone by Apple , #MyCalvins by Calvin Klein ,#JustDoIt by Nike, #ShareYourEars by Disney , #HereToCreate by Adidas , #IceBucketChallenge by ALS Association, to name a few .
What is a # Hashtag?
While in layman language, ‘octothorpe’ is the official name for the # symbol meaning “eight fields”, in computer code, the # symbol means that everything that follows is only comment, and not an instruction. On Twitter, Facebook, and Instagram, friends are tagged with the @symbol while topics and discussions are tagged with the # symbol.
The United States District Court Northern District of California in Align Technology, Inc. vs. Strauss Diamond Instruments, Inc. N.D. Cal. 2019, has noted that, “a hashtag is a type of metadata tag used on social networks such as Twitter and other microblogging services, allowing users to apply dynamic, user-generated tagging which makes it possible for others to easily find messages with a specific theme or content. Searching for that hashtag will yield each message that has been tagged with it”.
The fact that the searching of a particular hashtag will bring the user to a conversation of a definite page has enlightened different companies to bring a revolution in the manner of promotion of their products, which has further drawn them into registering these hashtags to restrict competitor companies in stealing business. As per the law on intellectual properties, distinguishable signs and/ or marks are universally covered under the ambit of trademark laws, which has led the companies to approach their regional Registrars to have their hashtags registered under the respective law and have also attained limited success in doing so. Examples of such trademarked hashtags include #smilewithacoke (Coca-Cola), #McDstories (McDonalds), and #makeitcount (Nike).
Align Technology, Inc. vs. Strauss Diamond Instruments, Inc. N.D. Cal. 2019 No. 3:2018cv06663 – Document 75 (N.D. Cal. 2019)
The #Trending Global Perspective
The law on trademarks is more or less uniform in the nations who are signatories to Trademark Law Treaty, 1994. It would be worthwhile to examine the protection accorded to hashtags in countries where such issues have arisen.
The United States of America has registered the highest amount of #hashtags, followed by Brazil. According to the Trademark Manual of Examining Procedure (“TMEP”) published by the United States Patent and Trademark Office (USPTO), hashtags are registrable as trademarks “only if the mark functions as an identifier of the source of the applicant’s goods or service”. Therefore, ‘source identifier’ is the primary factor considered by the Courts to admit valid hashtag registration and ascertain infringement in case of claims.
The United Kingdom Legislature and Courts are also functioning on similar lines in their drive to register hashtags as trademarks. According to the UK Trademark Act, 1994 (as amended in 2018), a “trademark” has been defined as a “sign which is capable of distinguishing goods or services of one undertaking from those of other undertakings”. As per the law, a trademark may consist of words, designs, letters, numerals, colors, sounds, or shape of goods or their packaging.
UK’s first hashtag was registered in the year 2014, by a company named “Wyke Farms”. After providing evidence of the fact that the hashtag “#FreeCheeseFriday” had attained distinctiveness through concurrent usage by the company on social media websites, Wyke Farms was able to convince the UK IP Office to register the same as a trademark.
The Taiwan Trademark Act is fairly new and was enacted in the year 2016 and defines a trademark to refer to any sign with ‘distinctiveness, which may, in particular, consist of words, designs, symbols, colors, three-dimensional shapes, motions, holograms, sounds, or any combination thereof.” Thus, while the definition used in this statute is more exhaustive than the one under the UK Trademark Law, it is however, needful to mention that even this definition does not cover special characters like hashtags within its ambit.
The stance of the Taiwan judiciary on the note of whether use of hashtags would be protected by the Trademark Act was partially clarified in the recent case of OP Bicycle Co Ltd v. Marechal Asia, where the Taiwan Intellectual Property and Commercial Court (TIPCC) held that when another’s trademark is used to create a hashtag merely for the purposes of promotion, and not to identify any source of the goods or services, it would not constitute infringement as the purported Defendant has not made use of such hashtag as a Trademark.
OP Bicycle Co Ltd v. Marechal Asia, Case No. 2021-Ming Shan Tzu-18.
Section 2 (1) (zg) of the Trade Marks Act, 1999 defines a “well known trade mark”, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.
The Indian law of trademark categorizes marks in 45 different classifications including different kinds of goods, services and other materials. Thus, while the usage and registration of hashtags is a novel usage and practice, litigations pertaining to the use of certain hashtags have been increasing at a gradual pace.
Decisions of Indian Courts
In Frankfinn Aviation Services Private Limited vs. Tata Sia Airlines Limited, the Hon’ble High Court of Delhi, in a case pertaining to the infringement of the Plaintiff’s trademark “fly high” by the Defendant through their usage of the hashtag ‘#flyhigher’, discussed about how the hashtag was used by the Defendant in conjunction with the latter’s well-known trademark and was rather used merely for promotional and advertising purposes. While on the issue of whether the Plaintiff was able to prove the case of trademark infringement, the Court held that,
“Plaintiff cannot allege that Defendant has infringed its proprietary rights in the trademark ‘FLY HIGH ‘since it does not use the said mark in classes 16 and 41 in which the Plaintiff claims to hold registrations. The core services of the Defendant are in classes 12 and 39 which relate to Airline Industry (goods and services). At the very highest, assuming without admitting that Plaintiff has any rights and assuming that Defendant’s use is use as a trademark, to maintain a claim for infringement against the Defendant, Plaintiff would require to have registrations in class 12 (relating to vehicles), class 39 (transport services) and class 35 (advertising).”
Another case where the use of a hashtag became subject to a dispute regarding the infringement of Trademark was Moonshine Technology Private limited v. Tictok Skill Games Private Limited & Ors., where the Hon’ble High Court of Delhi was presented with the argument that the Defendant, by using the term ‘WinZOBaazi’ and the hashtag #WinZOBaazi has intentionally passed off the Plaintiffs trademark “Baazi”, which was well known in the online gaming industry. The Court negated the Defendant’s argument of ‘Baazi’ being a descriptive word and decided the case in favor of the Plaintiff.
“Traditional Advertisement campaigns are a way of ‘hard-selling’; Hashtag campaigns are a way of ‘soft-selling’.
Frankfinn Aviation Services Private Limited vs. Tata Sia Airlines Limited, 2022 SCC Online Del 3550.
Moonshine Technology Private limited v. Tictok Skill Games Private Limited & Ors., 2022 SCC OnLine Del 296.
A hashtag is a feeling-based invitation to the users to share their experiences and to bond with a particular goods or service brand. While advertisement campaigns target the purse strings, hashtags tug at the heart strings of the intended users with an invitation to connect emotionally with a brand.
Hashtags go a step further than an advertisement which is a one-way communication by the service provider/ goods manufacturer about what value can be provided by them to their users. By running a hashtag campaign, the companies can make in-roads into the personal sphere of users through their social media apps. Not only can companies get valuable feedback / response directly about the kind of feelings that their product/service invokes in their users; they can absolutely endear their product/service by utilizing that data.
A hashtag is a mass of data wealth garnered directly from the public through their social media usage. The identifiability of hashtags with brands, render them entitled to protection based on how creative and distinguishable they are and the volume of hashtag following and subsequent increase in sales.
Global trends have become rampant within the social media hemisphere, so much so, that in certain circumstances, a business can be made or ruined by a mere sentence posted on websites like Twitter. Thus, using the perfect hashtag has apparently become an absolute necessity of businesses wishing to increase their sales, manifold. In such cases, it also becomes essential that the companies are provided with protection of such hashtags as intellectual property,
In the Indian context, it can be safely presumed that India being an IT giant both as a producer and consumer, the # campaigns would gain momentum in the coming times.
At the same time, the Indian Courts have widely interpreted the existing provisions for intellectual protection regime to cover cases of hashtag disputes presenting challenging questions of fact and law; and in doing so, they have also generously drawn from cases from around the world.