Can a hashtag be protected under Trademark law?

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This article is written by Kashish Khattar, Amity Law School, Delhi [IPU], currently enrolled in the Ace your Internship course at Lawsikho.

Introduction

What is a hashtag?

Hashtag is a word or phrase preceded by a hash sign (#), used on social media websites and applications to identify messages on a specific topic. The initiator of a hashtag has an intention to maximize the reach of the topic to the people and it also serves as a common platform for a topic. The content becomes viral and results in the generation of a #tag, which then garners the attention of a wider audience. The companies then try to en-cash upon these moments of publicity and promote their product while increasing their association with the consumers. Social media platforms have become indispensable marketing channels for brand owners. And in the 10 years since the #hashtag emerged as an online marketing tool, interest in registering #hashtag trademarks has taken off.

Recent research shows that while just seven companies submitted applications for trademark-specific hashtags in 2010, the number of these applications has been rising steadily, spiking in 2016 with a 64 percent annual increase and some 2,200 applications to register trademark-specific hashtags filed globally.

Position of USPTO

The United States Patent and Trademark Office (“USPTO”) reports that they have no problems with hashtag trademarks, and have accepted applications going in hundreds. The USPTO applies similar rules as to what it applies to trademarks that have .com or a domain name.

A hashtag trade mark is only registrable if the word that’s added to # or “hashtag” is ‘distinctive’. The USPTO has recognized a hashtag as a trademark only if the term “it functions as an identifier of the source of the applicant’s goods or services”.

In its Trademark Manual of Examining Procedure (“TMEP”), the USPTO says that a mark consisting of the hash symbol (#) or uses the word HASHTAG can receive trademark protection, and be registered, or if it serves as a source-identifier.

The USPTO particularly says that hashtag trademarks that do not qualify as source-identifiers, hence as trademarks. They were typically made for searching for topics within the social media domain. The USPTO does not take a concrete position whether hashtags are protected or not. The USPTO has accepted a number of hashtag marks for registration but has also rejected a lot of applications. They consider it on a case by case basis.  

The USPTO’s treatment of hashtag marks is similar to its treatment of domain names, which it generally regards as addresses on the Internet but which can sometimes serve a source-identifying function.  A domain name will be registered only if the “mark, as depicted on the specimen, [is] presented in a manner that will be perceived by potential purchasers to indicate the source and not as merely an informational indication of the domain name address used to access a website.”

While the PTO holds that hashtags can sometimes qualify as protectable trademarks, at least one court has suggested that hashtags may never be protectable as trademarks.

In Eksouzian v Albanese, the issue was whether the use by one of the parties of the hashtags #CLOUDPEN and #CLOUDPENZ on Instagram breached the terms of a trademark settlement agreement. In this agreement, the party which using these hashtags had agreed to refrain from any trademark style use of the word “cloud” in conjunction with the words  “pen” or “penz” (the word “pen” is apparently used as a descriptive term for e-cigarettes).

This understanding had seemingly been given because the other party to the agreement had US trade mark registrations or applications for Cloud Penz and Cloud Pen. The court, in this case, held that there was no breach of the agreement.  It justified its decision by saying that “hashtags are merely descriptive devices, not trademarks, unitary or otherwise, in and of themselves”. The court went on to say that the use of #CLOUDPEN was merely “a functional tool to direct the location of the plaintiff’s promotion so that it is viewed by a group of consumers, not an actual trademark.” Basically, according to the court’s ruling, a hashtag is a “descriptive device” and not a “source identifier”.

Hashtags under the Indian Trademark Law

The question is, whether a hashtag can be registered as a trademark under the Indian Trademark Act, 1999?

The definition of a mark is provided under Section 2 (m) of the Indian Trademark Act, 1999 which states that

“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”

Then a hashtag can qualify as a mark under a combination of words and numeral but in order to qualify as a trademark, the same has to qualify the definition of a trademark provided under the Indian Trademark Act, 1999 under Section 2 (zb) which states as below:

“Trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods or their packaging and combination of colours”

The two conditions mentioned under the Act for a mark to be qualified as trademarks are as mentioned below:

  1. Capable of being represented graphically;
  2. Capable of distinguishing goods and services of one person from another person.

We can see that first condition is fulfilled instantly as hashtag is a combination of words and numerals which is represented graphically.

The problem arises with the second condition, which is the ultimate test for a hashtag to qualify as a trademark.

Typically, hashtags have a limited shelf life because topics which trends for a brief period before they die their own death in a short span of time and some other topic and hashtag takes over. Under the Trademark Law, it is not easy to achieve the essential or basically, the second condition. The trademarks are a “source identifier” and the hashtags which can fulfill this criterion can qualify for registration under the Act.

Under Section 9 of Indian Trademark Act, 1999, the absolute grounds of refusals are given and under sub-section (1) of section 9 states that:

“The trademarks -which are devoid of any distinctive character, that is to say, not capable of distinguishing goods or services of one person from those of another -shall not be registered”

Analysing the section, it can be said that hashtags which are distinctive in nature can be registered as a trademark under the Indian Trademarks Act, 1999. So, hashtags which can fully satisfy the two essentials. That hashtags which are distinctive in nature or have become distinctive within a period of time can be said to be qualified to be protected under the Law.

The distinctiveness mentioned under the Act may be classified in two:

  1. Inherent; and
  2. Acquired.

A hashtag can easily fall under any of above mentioned two categories, it may either be inherently distinctive in nature due to it being an invented word or it may be something which trends for a longer period of time such that the people start to identify the particular source through hash tag only. Further, it shall also be kept into the mind that applying a hashtag to a common word or generic word would not make it a trademark as putting a hashtag will not make it distinctive. The trademark needs to pass the test of distinctiveness of trademark provided under the Act.

Infringement of Trademarks

What is infringement?

Infringement of trademarks as per Section 29 of the Trademarks Act, 1999 is defined as a use of a mark, by an unauthorised or an authorised person or a person who is not the registered proprietor, which is identical or deceptively similar to the trademark in relation to the goods or services in respect of which the trademark is registered.

Simply, it is a violation of the exclusive rights given to the registered trademark holder without their permission of the owner or the licensees. Courts have from time and again held that the similarity of two marks causes the confusion in the minds of the people. For example, The lesser known brand may take an advantage of the hard-earned reputation of the mark’s original holder, the famous brand.

It is not an easy task to prove infringement of a trademark. The mark is said to be infringed in the following cases which are discussed below:

  1. If the mark in dispute is identical with or deceptively similar to the registered trademark and is in relation to the same or similar goods or services;
  2. If the identical or similar mark can cause confusion in the minds of the general public to have an association with the registered trademark
  3. If the registered trademark is used as a part of a trade name or business concern for goods and services in respect of which the trademark is registered
  4. If the trademark is advertised and as a result, it takes unfair advantage or is contrary to the honest practices or is detrimental to the distinctive character and reputation of the registered trademark.
  5. If the registered trademark is used in the material meant for packaging or labelling of other goods or as a business paper without due authorization of the registered user.

For a further read on infringement, click here.

Remedies

  1. Injunction against the use of the trademark;
  2. Damages;
  3. Handing over of Accounts and Profits;
  4. Appointment of a commissioner by the resp. Court for custody or sealing of infringing material and accounts.; and
  5. An application under Order 39 Rule 1 and 2 of CPC for grant of an injunction or an ad interim ex parte injunction.

Conclusion

While these tools have become a normal feature of the digital landscape, the sharing culture on which they depend can present some intellectual property-related challenges. Even though the registration of hashtags as trademarks are still not very popular in India but the craze of social media is catching up with the mass due to the availability of cheap data because of the entry of Reliance Jio in the market. The internet market has suddenly grown beyond anyone’s imagination and everyone has an easy access to the same. In my opinion, This will lead to the emergence of hashtags as trademarks in the near future as a hot topic in the IP market.

Kashish Khattar :

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