The Internet in today's world has experienced and witnessed a major shift with constant development. The public use the Internet as a medium for their business promotion, reporting, networking and sharing all the details to their active consumers. As the Internet has proved to be a boon for us and have been a gift to the humanity but without any doubt they have also come with various drawbacks. It has also become a medium for activities which are forbidden by the law. The evolution of the e-commerce and other social media websites have resulted in a number of intellectual property issues.
Today, the social networking sites are witnessing a massive growth in memberships. For example: Facebook on of the most famous social networking site has estimated to have more than 350 million active users. Twitter sees a growth of 32.1 million users[1]. All businesses have rapidly increased on these social media handles in the form of advertising as they have become the simplest, cost-effective ways to advertise, protect and familiarize the public. But also, many complaints regarding all intellectual property infringement and other privacy concerns have been lodged at the same time.
Many a time when companies which have spent money and time in their marks try to make it as part of their domain names find that those names have already been registered by some cyber-squatters and it gets difficult to get the domain name to the original owner. Similarly, issues relating to linking, meta-tagging, advertising have become very common in today's digital world. The courts have faced struggles with the issues of infringement in the Internet and social media as the use of both the Internet and the social media is increasing beyond any imagination and the intellectual property are also likely to be affected requiring the judicial system to be more flexible while dealing such issues with the evolving technology and making all necessary changes in the law as required.
VARIOUS WAYS OF TRADEMARK VIOLATION
DOMAIN NAME
A domain name is defined as a computer address by which a company or any individual can locate by any other user with the Internet access. It mainly serves to differentiate and locate the other resources which are accessible through the Internet. It is made of different characters and often consist of a word such as a brand name or organization name or a trademark. A company without a proper domain name will be almost invisible on the Internet and its customers will not be able to find it. A company is free to select their domain names from which are available, they mostly prefer to select names which can be easy for accessible and also easy to remember or well-known trade names. The conflict arises when one company chooses a name that has been registered by another and each want to use the same name in their respective domain name. In order to guarantee the distinctiveness of the Internet Address or the IP Address, registration of domain name is necessary. Domain name is allocated to any company or individual by the InterNIC (Internet Network Information Center), under a contract with the NSI (Network Solutions, Inc.)
To establish trademark infringement where a trademark is used by another in domain name, various principles has been laid down by courts in various cases:
- The registration of a well-known trademark as a domain name can give rise to liability for passing off. Where a domain name is registered, in proper circumstances, itself can constitute an instrument of fraud which leads to the liability for passing off.[2]
- If the trademark owner and the domain name owner promote the same goods and services and both of them are confusingly similar, the trademark owner with prior rights can bring a suit for infringement.[3]
- Only the use of another's trademark in the domain name will be allowed where the domain name itself does not give rise to confusion.[4]
One important question arises: 'Should Domain Names Be Protected as Trademarks?' To answer this, domain names are not same as to trademarks and therefore not be found to infringe the existing trademarks. Matching domain names and addresses, many scholars argue that domain names do not have the right to be protected. Others, however, have emphasized that domain names apply equally well and present the same purpose as trademarks: point to source of good, service, or information provided online, and they allow the company to transfer their name recognition and goodwill to computer network medium. Indeed, "domain names may appear unusual because they appear to be names and addresses; both find and identify online resources. "If the law of trademark had to admit only the volume of the domain name in order to get an internet site, then the trademark law applies to the domain names... might be a problem. However, the second condition of domain names must be considered-ability of domain name in order communication and recognise of its source. Because domain names provide this important function of identifying the source of the product or service, and should be given protection as trademarks, and should be also recognized as being able to bypass other infringing trademarks.
HASHTAGS
Hashtag (#) has been known widely all over the world and so now protecting hashtag trademarks has become important. With time passing by, the number of applications by companies all over the world for the protection of specific hashtags has increased widely since 2010, says a recent research. Although hashtags seem to be very normal and a regular feature that we use in social media platforms, the sharing sector where it is present can be a challenge for the intellectual property rights.
The first thing that has to be considered is what can and cannot be registered here. So as known, trademarks are a medium to differentiate between various goods and services that is provided. With its use, it becomes very convenient for customers to search for a particular product. Though it helps in brand engaging and it promotes the products and boosts up the sale but that alone is not enough for a brand to register for a trademark. The United State Patent & Trademark Office has provided us with guidelines that helps us understand this better. It says that a hashtag can be registered successfully only if the particular hashtag explains and clearly identifies the product and identifies itself as a source of the same. Some of the very common registered trademarks in the US are:
- #smilewithacoke (The Coco Cola and company)
- #mcDstories (McDonalds)
- #makeitcount (Nike)
The two basic condition required for a hashtag to qualify for trademarks are:
- It should be graphically fit to be seen
- It should differentiate itself from the other products and services.
The trademark may be different from the start if it would have been invented or another case could be when a particular word has been used for a very long time period and now people relate to a particular goods or service through that hashtag only. Hence it is quite important to also understand that if we apply a hashtag to the most common simple words then it will not be considered a trademark. This hashtag needs to pass through all the levels of distinctiveness to attain trademark. Also it is very important to strategically use the hashtags when done in a commercial way. So is the increased use of hashtags in social media platforms is a great medium for business or not? The argument on both sides are good. Though if not regulated the use of hashtags having trademarks may take a poll on the reputation of a business. If a brand manager gets to make a hashtag trending that leads it to come to people's homepage and therefore it costs a large amount of advertising cost.
Whilst there has not been any such dispute in front of Indian court but it will not take a lot of time for courts to witness these disputes springing up.
CONCLUSION
As the Digital era have proved to be a potential platform for business expansion, it has undoubtedly also involved a large number of legal risks. The most common cause for disputes in the Internet has been the trademark infringement of using one another's marks. The issue of trademark infringement in the digital era has been a complex issue because Internet and Social media platforms are growing rapidly and the law is also evolving with time. It appears that the issue between trademark infringement and protection of trademark will not be solved by legislation but, the focus in the subsequent years will be on resolving that issue.
Author: Arpita Tripathy – a law student of KIIT School Of Law, in case of any queries please contact/write back to us via email chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.
References:
[1] Klemchuk LLP, Brand Enforcement on Social Networking Sites, (April 3, 2022, 3.30PM), https://www.klemchuk.com/ideate/social-networking-sites-brand-enforcement
[2] British Telecommunications plc v. One in a Million Ltd, [1999] 1 WLR 903: [1999] FSR 1 CA.
[3] Brookfield Communications Inc v. West Coast Entertainment Corp, 174 F 3d 1036 (9th Cir, 1999).
[4] Bally Total Fitness Holding Corp v. Faber, 29 F Supp 2d 1161 (CD Calif 1998).
No comments:
Post a Comment