India: Trending In IP: #Hashtags

Last Updated: 7 April 2017
Article by Himanshu Sharma

Most Read Contributor in India, December 2018

Introduction:

The emergence of liberal markets across the world has become a feeding ground for the new marketing techniques and key players in market are now coming up with fresh approaches in the field of marketing their products. In the recent times, the classical methods of marketing are proving to be redundant as consumers have become tech savvy and that they can only be catered by the methods which are more novel and unique. The technology also have played a big role in the transformation of marketing techniques and has provided new marketing platforms such as social media, web portal etc. One of the recent and most unique methods of marketing products is through # hash tags.

Hash tags 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 hash tag 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 become 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.

Hash tags as trademarks under Indian Trademark Law:

Now the question is, whether a hash tag 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"

Now as per the above definition a hash tag can qualify as a mark under a combination of words and numeral but in order to qualify as a trademarks 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:

"Trade mark 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 shape of goods or their packaging and combination of colours"

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

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

When we put these two conditions to a hash tags which is applied for the registration as a trademarks, we see that first condition is met instantly as a hash tag is a combination of words and numerals which can definitely be represented graphically.

Now the second condition, which is the ultimate test for a hash tag to qualify as a trademark should be analyzed. As the hash tags have a limited life because topics which trends for a brief period die their own death in a short span of time and the trending topic easily fall in to oblivion. There are numerous hash tags trending in a very short period and the second condition, which is also interpreted as distinctiveness under Indian Trademark Law, is not easy to achieve and rallied over a longer period of time in case of hash tags. The trademarks are a source identifier and the hash tags 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"

Considering the above section, it is easy to deduce from the above section that only hash tags which are distinctive in nature can be registered as a trademark under the Indian Trademarks Act, 1999.Hash tags which are distinctive in nature or have become distinctive with the passage of time can only be qualified for registration as a trademark.

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

  1. Inherent distinctiveness;
  2. Acquired distinctiveness

A hash tag can easily fall under any of abovementioned 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 source through hash tag only. Further it shall also be kept into the mind that applying a hash tag to a common word or generic word would not make it a trademark as putting a hash tag will not make it distinctive. The trademark needs to pass the test of distinctiveness of trademark provided under the Act.

Situation in USPTO:

The registration of hash tags as a trademark is catching up in the US market and there are numerous trademarks filed in USPTO. The USPTO in 2013 under TMEP §1202.18 of Trademark Manual of Examining Procedure recognized that only a term containing the hash symbol or the term "hash tag" which can function as a source identifier of an applicant goods and services can be registered as a trademarks. The USPTO has already granted over 100 hash tag registrations since 2013. Further there are other important notes under the TMEP such as TMEP § 1202.18 which provides that a hash tag may be registrable as a trademark if it includes a disclaimer of the wording "hash tag" or the hash symbol "in cases where they are separable from other registrable matter." Further it is also provide that USPTO will not allow registration of marks which consist only of the hash symbol or the term "hash tag" combined with merely descriptive or generic wording for goods or services.

Although the USPTO is providing the protection to the hash tags as trademarks but a US federal District Court has certainly put the hash tags trademark applicant's in to quandary. In case of Eksouzian v. Albanese, the court held that "because hashtags are merely descriptive devices, not trademarks, unitary or otherwise, in and of themselves." Id. at 15 (emphasis added). The court also held that that the term "pen" was merely a descriptive term for the products at issue and cited the TMEP provision stating "[t]he addition of the term HASHTAG or the hash symbol (#) to an otherwise unregistrable mark typically cannot render it registrable." Id." 1

This judgment of the court has put a question mark over the registrability of hash tags as trademark in USA for the time being but same decision is under review by higher Court. Still the USPTO is providing the registration to the hash tags as trademarks which are capable of serving as source identifier of the goods and services of the Applicants.

Conclusion:

Although the registration of hash tags as trademarks is still not very popular in India but the craze of social media is catching up with the mass due to availability of cheap data for usage due to the telecom war started with the entrance of 'Reliance-Jio' in the market. The market has suddenly expanded beyond imagination and people who earlier only heard about the power of internet, are now have easy access to the same. This will certainly lead to the emergence of hash tags as trademarks in order to cater the new consumer force and companies will definitely wants to take advantage of new consumers available in market.

Footnotes



1 No. CV 13-00728-PSG-MAN (C.D. Cal. Aug. 7, 2015)

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