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BEAWARE! HASHTAGS CAN ALSO LEAD TO TRADEMARK INFRINGEMENT SUIT

April 1, 2023

* Ms. Trupti Udaykumar Shetty

Trade mark is one of the many branches of Intellectual Property. Whenever we think about any product many images pop-up in our mind such as the brand names, its signature colours, jingles related to that product etc. all these things constitute a trademark. Every brand has made its name in the market so much that we as individuals directly co-relate these brands with that product. Such as instead of saying noodles we refer every noodle as Maggi or instead of saying toothpaste we refer it as Colgate. Trademark makes it easier for marketing any goods or services, in fact it is often used as a marketing tool by businesses to increase their finances. In India, the Trade Mark Act was the first statute law on trademarks. Prior to this Act, common law provisions like Section 54 of the Specific Relief Act 1877, sometimes applied to trademark difficulties, and the Indian Registration Act, 1908 was used to achieve registration. The Trademark Act 1999 and common law currently control and protect trademarks in India. According to Section 2(zb) of the Trademark Act 1999, a trademark is defined as a mark that can be graphically represented, is capable of differentiating goods and services owned by one person from those of others on the market, and includes the appearance of products, their colour scheme, and their packaging. This statute also specifies that trademark registration is not required, although it is frequently advised since once a trademark is registered, the owner is granted legal rights and protection for a term of ten years, and this period may be extended upon renewal. Trademark has gained lot of relevance in today's time and even the businesses have understood the significance of it. However, as general public it also important for us to understand whether or not we are infringing the trademark laws. Such as in today's social media forward world we tend to use hashtags on every post to tag specific content. It is also used for the purpose that it makes the internet users task easy to find a specific content in just one mere click. However, a large part of these hashtag users is unaware that some of the hashtags which they use randomly on their posts are registered trademarks. For example, #smilewithacoke and #cokecanpics are registered trademark used by the Coca-Cola Company. But people unknowingly use these hashtags on their personal social media most which could amount in infringement suits for its unauthorised use. Currently, the Trademark Law Treaty, 1994 signatory countries' trademark laws may be somewhat similar to one another. For instance, the USA has the most hashtags registered as trademarks worldwide, followed by Brazil. Hashtags can only be registered as trademarks “where the mark operates as an identifier of the source of the applicant's products or service” according to the Trademark Manual of Examining Procedure (TMEP) published by the United States Patent and Trademark Office (USPTO). Hence, "source identifier" is the primary factor taken into account by the Courts to accept a valid hashtag registration and identify infringement in the event of a lawsuit. In case of UK, in an effort to trademark hashtags, the legislature and courts of the United Kingdom are also proceeding along similar lines. A “trademark” is defined as a “sign which is capable of identifying goods or services of one business from those of other undertakings” in the UK Trademark Act, 1994 (as amended in 2018). The legal definition of a trademark includes words, drawings, letters, numbers, colours, sounds, and even the shape of a product or its packaging. In 2014, a company called “Wyke Farms” trademarked the first hashtags in the UK. After proving that it had gained distinctiveness through concurrent usage by the business on social media platforms, Wyke Farms was successful in convincing the UK IP Office to protect the tagline “#FreeCheeseFriday” as a trademark. The Hon'ble High Court of Delhi addressed how well the tagline was utilized by the Defendant in accordance with the latter's well-known trademark instead of being used merely for promotional and advertising purposes in Frankfinn Aviation Services Private Limited v. Tata Sia Airlines Limited, one of the recent cases in India. By using the hashtag “#fly higher,” the Defendant violated the Plaintiff's trademark “fly high”, according to the complaint. Whether or not the Plaintiff was successful in proving their claim of trademark infringement of the Plaintiff's trademark “fly high” by the Defendant through their usage of the hashtag “#fly higher”. Regarding whether the Plaintiff was able to establish the claim of trademark infringement, the Court decided as follows: “Due to the fact that the defendant does not use the trademark “FLY HIGH” in classes 16 and 41 where the plaintiff claims to have registrations, the plaintiff is unable to establish that the defendant has violated its intellectual rights in the trademark. The defendant's primary services fall under classes 12 and 39, which are associated with the airline industry (goods and services). At the very least, to maintain a claim for infringement against the Defendant, Plaintiff would need to have registrations in classes 12 (pertaining to vehicles), 39 (transport services), and 35 (advertising), assuming without admitting that Plaintiff has any rights and assuming that Defendant's use is use as a trademark.” In Moonshine Technology Private Limited v. Tictok Skill Games Private Limited & Ors.4 it was argued that the Defendant had intentionally misrepresented by using the term “WinZOBaazi” and the hashtag #WinZOBaazi, the Plaintiffs’ trademark “Baazi,” which was well-known in the online gaming sector. Another instance of a trademark infringement lawsuit involving the usage of a hashtag occurred in this case. The Court rejected the defence's claim that the word “Baazi” is merely descriptive and ruled in the plaintiff's favour. Therefore, it can be concluded that, global trends are now so prevalent in the social media sphere that, in certain cases, a single line posted on networks like Twitter can make or break a business.

Thus, it would appear that adopting the ideal hashtag has become a must for companies looking to significantly boost their sales. In such circumstances, it also becomes crucial to offer the businesses hashtag protection as Intellectual Property. Given the size of the Indian IT market, both as a producer and a consumer, it is safe to assume that the # campaigns will pick up steam in the near future. The Indian Courts did this while liberally referencing cases from throughout the world as they generally interpreted the current statutes for intellectual protection system to include situations of hashtag disputes posing challenging legal and factual issues. Hence, it is necessary for all the social media using public to be aware about the registered trademark hashtags and consciously check the hashtags before posting it on the internet to avoid any infringement suit on them.

References:
  1. Trademark Act, 1999, S.2(zb), No. 199947, Acts of Parliament,1949(India).
  2. Whirlpool Corporation v. Registrar of Trade Marks Mumbai and Ors., 1999 AIR SC 22.
  3. Roopali Chaturvedi, Can # Hashtags Be Protected As Intellectual Property In India?, Mondaq (Jan. 24, 2023), https://www.mondaq.com/india/trademark/1274440/can--hashtags-be-protected-as-intellectual-property-in-india.
  4. BitLaw, TMEP 1202.18: Hashtag Marks, Oct. 2017 Ed. (BitLaw), https://www.bitlaw.com/source/tmep/1202_18.html.
  5. Frankfinn Aviation Services Private Limited v. Tata Sia Airlines Ltd., 2022/DHC/004489.
  6. Moonshine Technology (P) Ltd. v. Tictok Skill Games (P) Ltd., CS(COMM) 331/2021.
Author:

* Ms. Trupti Udaykumar Shetty
University of Petroleum and Energy Studies, School of Law.
Dehradun, Uttarakhand.

Disclaimer: The opinions expressed in the article are the personal opinions of the author. The facts and opinions appearing in the article do not reflect the views of the Alliance Centre for Intellectual Property Rights(ACIPR) and the Centre does not assume any responsibility or liability for the same.