Rise of the #Hashtag on social media and related trademark issues

A hashtag is a word or an unspaced phrase prefixed with the hash character (or number sign), #, to form a label. A hashtag allows grouping of similarly tagged messages, and also allows an electronic search to return all messages that contain it. Because of its widespread use, the word, hashtag, was added to the Oxford English Dictionary in June 2014.[1]

While the use of the hashtag was first introduced on the micro blogging site Twitter in 2007, its use has increased significantly in the past few years and has expanded to reach almost all social networking websites including giants such as Facebook and Instagram. The idea is for posts and messages regarding a common topic to be accessible at a single place by tagging them with suitable hashtags.

The soaring popularity of hashtags has also seen trademarks and company names being used as hashtags by consumers around the world to share their experiences surrounding the trademark and its related products or businesses. However, trademarks have also been misused in the guise of hashtags by competitors. Such free and extensive use of trademarks and company names as hashtags raises some important questions:

Can hashtags be trademarked?

The Indian Trade Mark Act defines a trademark as “…a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others…”.

A hashtag falls squarely within this definition which leads us to believe that a hashtag can be trademarked in India as long as it is meant to be used in connection with a product and service in a way that the hashtag acts as a source identifier. This means that in relation to products, the hashtag must be present on the goods or packaging and in relation to services, the hashtag must be used in relation to performing or advertising the services.

Can use of hashtags containing registered trademarks be considered infringement?

Considering that hashtags may be used be each and every internet user in the world, regulating its use is nearly impossible for obvious reasons. If a consumer publishes a post and tags it with a hashtag containing a trademark, can the trademark owner stop him from doing so?

It depends.

According to the Indian Trade Mark Act, “a registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark”

The important point to note here is that in order to constitute infringement, a mark must be used in the course of trade. Majority of the use of hash tags containing trade marks or business names by internet users is simply for discussions, reviews, criticisms and feedback surrounding a particular product or service. Such use cannot constitute trade mark infringement. However, if a hashtag is used in the course of trade, i.e. on products or in advertising a service, it may constitute trademark infringement. Thus, the context of use of a particular hashtag is important to ascertain whether that particular type of use can be stopped or not. The intention of the user of the hashtag will be an important consideration. If the intention is to deceive the public or suggest some sort of a false association, infringement could be established.

What remedies are available to brand owners?

A majority of the social media platforms today have policies in place to curb the misuse of trade marks by its users. These general policies would apply to the use of hashtags as well.

For example, Facebook has a “Statement of Rights and Responsibilities”[2] governing the relationship between Facebook and its users. It prohibits Facebook users from violating trade-mark rights of other users. The social network also provides a mechanism for “reporting trademark infringement”. Instagram has a similar statement and reporting system.

If brand owners see misuse of their trademarks in the guise of hashtags they may use these online mechanisms to report such misuse and have a specific post taken down.

#Hashtag – #Friend or #Foe?

Is the rise of hashtags a good thing for businesses or a bad thing? There are good arguments on both sides. While unregulated use of hashtags containing trademarks may harm the long term reputation of business and may lead to dilution of a trademark, hashtags can also be smartly used by brand owners to heavily promote products. Many companies have already manipulated hashtags to their own benefits. For example, a hashtag which suddenly becomes popular is termed as a trending hashtag and is displayed on users’ homepages. If brand owners can manage to make hashtags containing their trademarks ‘trend’ on social network, it leads to mass advertising free of cost which will ultimately drive sales.

Conclusion

Many brand owners have already commenced trademarking hashtags to protect their rights online. However, merely trademarking hashtags will not help. Brand owners need to monitor use of hashtags containing their trademarks very closely to prevent loss of reputation. At the same time, they need to learn how to leverage hashtags as a powerful advertising tool.

While there have not yet been any disputes surrounding use of hashtags which have reached the Indian Courts, it cannot be too long before we see these disputes springing up.  #watchthisspaceformore

[1] http://en.wikipedia.org/wiki/Hashtag last accessed on 19 January, 2015

[2] https://www.facebook.com/legal/terms?ref=pf last accessed on 19 January, 2015

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