Trademark Protection in the Age of Social Media

Author: Aditi Pandey, Alliance University.

Modern technology has made sure that the current generation is able to benefit from being on social media. Due to the developments in the internet, a lot of the population is suddenly online and have access to the various applications that play an important role in this area. Trademark law is vital especially for businesses and it protects them from any type of infringement that could be caused by any third party. Social media applications are a medium where any type of copied material can be identified or where any such type of material can be uploaded for the public to consume. This paper aims to analyze the current trademark law provisions and determine to what extent they prevent any kind of digital infringement or provide protection to the creators from such a violation. Some of the articles, scholarly papers and judgments shall be taken into consideration and examined in order to reach an appropriate conclusion. The difficulties and challenges faced by the trademark holder due any gaps or limitations which exist, shall also be discussed in this research paper. 

Trademark, Social Media, Infringement, Brand Image and Passing Off 

The main objective of intellectual property rights is to protect the individual who uses his creative mind and develops an innovative idea which can be utilized and applied in the markets. These rights have been implemented to foster innovation and make sure due credit is given when inspiration has been taken or adaptation of an existing product is being sold by the infringer as their own. Trademark is one of the intellectual property rights that has been used by entrepreneurs to make sure that a special identity is given to their business, and through this identity they are able to develop into a brand which is known by the general public. It provides protection to the mark of the owner by making sure it is being represented graphically and it is capable of distinguishing the goods or services of the business from those of others. Marks in this context include any device, brand, label, name, word, letter, shape of goods, packaging in relation to the goods being produced or services being rendered by the group of individuals who are seeking this type of protection. 

Social media is an amazing tool for businesses to know about the preferences of the consumers and also their spending pattern. This helps them make informed decisions and provide better services so that the amount of revenue generated by them can also increase. Although this is a great marketing tool, there are also some challenges that arise while it is being used. One of the main issues that can be observed is that of misrepresentation being done to the name or mark of the business, which is in turn causing them loss as there are higher chances of misuse taking places within the firm. When such kind of malpractice is taking place, the goods being supplied are usually of inferior quality. Consumers belonging to any sector of the society have access to social media applications nowadays and due to their lack of experience there is a high chance that they may get confused and buy the fake products thinking it is from the original brand or creator. 

Through this research paper we are aiming to answer the question of whether the current trademark provisions are adequate and effectively cover protection given to work which is present in the digital medium. The scope is limited to the Indian market and the research will primarily focus on firms that have their operations in India.

1. Trademark  Law  in  the Digital Age: Challenges and Solutions for Online Brand Protection by RickyThio, RioChristiawan and Wagiman –

This paper examines the evolution of trademark law in the digital age, focusing on challenges and solutions for online brand protection. It identifies key issues such as cybersquatting, counterfeiting, jurisdictional complexities, and anonymity of infringers. The paper emphasizes the importance of international cooperation, legislative reforms, and collaborative approaches involving stakeholders to enhance trademark protection.

2. Domain name and trademark infringement (Cybersquatting) in the digital age by Chinara Gasimova –

The paper examines the issue of domain name and trademark infringement, specifically focusing on cybersquatting in the digital age. It highlights how the rise of the internet and social media has facilitated the proliferation of counterfeit goods and misleading endorsements, posing significant challenges for brands. The author discusses the mechanisms of cybersquatting, its impact on brand reputation and consumer trust, and various strategies employed by cybersquatters.

This paper uses a doctrinal research method, focusing on an in-depth examination and analysis of existing legal literature to provide a well-rounded understanding of the topic. Under this approach, various legal sources, including legal journals, scholarly articles, research papers, and case studies, are scrutinized. The objective is to interpret and critically evaluate the current legal framework surrounding the subject. It is a qualitative method of research where non-numerical data has been collected and analysed. This method helps identify gaps, ambiguities, and potential improvements within the existing legal doctrines, offering a comprehensive view that can guide future research and legal development.

Trademark infringement refers to the unauthorized use of the mark by a third party while promoting their goods in the market. It occurs when the mark is used without prior consent of the trademark holder or without an authorized license granting them the permission to use the mark while selling their particular product. Social media has revolutionized marketing strategies for businesses of all sizes. While trademarks have always been vital for brand recognition, the rise of social media has significantly increased the risk of trademark infringement. 

One of the ways infringement takes place is the use of mark and hashtag while posting on the particular social media application. As per the Trademark Act the term “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.” The hashtag has been used by firms to differentiate themselves from other brands and it is personal to the brand in the sense that it relates to the particular product being sold and it is special in highlighting its features to potential customers. Various parties use this particular to advertise their product and have tried to deceive the customer by portraying the product as their own, they take advantage of the reputation that was built by the well-known brand which initially holds the hashtag or mark.

As per Section 27 of the Trademarks Act there can be no action taken for infringement of an unregistered trademark. This means if the firm has not registered their name, device or logo they cannot take any action or benefit under the provisions of the Act. This does not stop them from taking the common law remedy of passing off, where they can claim damages and prevent the infringer from any more actions that have caused loss to the aggrieved party. 

Section 29 The Act talks about certain acts that constitute infringement of a registered or unregistered trademark. It states that infringement takes place when there is unauthorized use of an identical or deceptively similar mark for goods/services covered by the registration, likely to be perceived as a trade mark. This can also occur when someone uses a trademark that is identical or similar to a registered trademark, even if the goods or services are different. However, if the registered trademark is well-known in India and the use of the similar mark could unfairly benefit from or harm the reputation of the registered trademark, it could still be considered trademark infringement.

As per this provision trade name misuse also amounts to infringement. In such cases there is use of the registered trade mark in a business/trade name for the goods or services covered by the mark. When we talk about the definition of use, it includes affixing to goods, marketing or advertising under the mark. This means that all the unauthorized advertising and promotion tactics on platforms like Instagram, YouTube or Facebook will amount to infringement of the trademark of the original user. Advertising infringement is highlighted through this section. It clearly explains how advertising in any medium that unfairly benefits, harms the mark’s character or tarnishes its reputation will amount to infringement. 

One of the key aspects of trademark infringement in the digital arena is comparative advertisement. If we look at Section 30 of the Act it lays down certain limitations and restrictions on the effect of a registered trademark. It prohibits comparative advertising to a certain extent as it states that honest practices must be adhered to in industrial or commercial matters related to the concerned mark. Although advertising is promoted and required to market the product, it must not cause an adverse effect to the competitor. The legal framework prohibits criticizing a competitor's product based on alleged unethical monetary practices. However, the problem of disparagement extends significantly into digital spaces, with social media platforms frequently becoming breeding grounds for advertisements that attempt to undermine rival products. Given the profound influence of online platforms, there is an urgent requirement to address and mitigate such practices.

1. Eureka Forbes Ltd. vs. Pentair Water India Pvt. Ltd. –

Eureka Forbes Ltd. marketed their water purifiers under the brand "Aquaguard" employing UV technology and claims to have significant market share. Pentair Water India Pvt. Ltd. advertised its RO water purifier, stating that the product removes contaminants that cannot be detected by UV purifiers. Eureka Forbes had filed a suit claiming the advertisement to be disparaging and sought an injunction against displaying the ad. The court held that Pentair's advertisement disparaged UV technology, indirectly impacting Eureka Forbes' "Aquaguard" products. Though the brand "Aquaguard" was not directly mentioned, reference to UV purifiers caused actionable harm and an injunction was granted against Pentair to prevent further publication or circulation of the advertisement during the pendency of the suit.

2. Yahoo! Inc. vs. Akash Arora and Anr. –

Yahoo Inc. had an international reputation, although it had no trademark registered in India. Akash Arora registered the domain name "yahooindia.com" with the intention of providing similar internet services. Yahoo claimed that the use of the domain name by Arora would lead to confusion among consumers, causing dilution of its trademark reputation, and would constitute trademark infringement and passing off. The court held that Arora's domain name was deceptively similar to Yahoo!'s registered trademark. Being so similar and with the kind of services provided by Arora, it showed a very high chance of causing confusion to consumers. In conjunction with the nature of the services, this would amount to cybersquatting, which is an act whereby one exploits registered trademarks for their own enrichment. The judgment emphasized that such actions not only infringe on trademark rights but also damage brand reputation. Yahoo!'s established goodwill was a key factor, and Arora's attempt to capitalize on it was deemed unacceptable.

3. Satyam Infoway Ltd. vs. Sifynet Solutions Pvt. Ltd. –

Satyam Infoway Ltd., an established internet services provider, had registered many domain names, all containing the term "Sify," which was derived from its corporate name. Sifynet Solutions Pvt. Ltd. began operating under such domain names as "siffynet.com" and "siffynet.net" starting in 2001, which Satyam alleged were confusingly similar to its own domain names, thereby creating a likelihood of confusion and an opportunity for passing off. While the trial court had granted an injunction in favour of Sify, it was reversed by the High Court, prompting this appeal. The Supreme Court recognized that Satyam Infoway was the prior user of the "Sify" name and had built considerable goodwill associated with it. It was likely that the use of a similar domain name by Siffynet would create confusion among consumers as to the source of the services. It also went on to state that domain names had varying features of trademarks and were entitled to the passing-off laws.

1. Cybersquatting –

Cybersquatting refers to the practice of registering a domain name that is either identical to or confusingly similar to a well-known brand name or trademark. This practice exploits the established goodwill and recognition associated with the brand, often with the intent to profit from it. Consumers may face confusion regarding which website is authentic, leading to potential security risks if they inadvertently provide personal information on fraudulent sites.

2. Counterfeiting –

The digital age has significantly transformed the landscape of commerce, enabling the rise of counterfeit goods as a serious challenge for brands worldwide. Customers may become wary of purchasing products from reputable brands if they fear encountering fakes, this erosion of trust can lead to decreased sales and customer loyalty. Therefore it is imperative for businesses to adopt proactive measures that leverage innovation while safeguarding their brand integrity

3. False Endorsement –

False endorsement is a legal concept that arises when an individual or entity uses a company's name, logo or other branding elements to create the misleading impression that the brand endorses or is affiliated with their goods or services. This practice can lead to significant legal and reputational repercussions for both the brand being misrepresented and the party making the false claim. This can be observed in social media platforms like Instagram and Facebook where many brands create profiles to advertise their product. 

4. Cross-border Issues –

When we talk about platforms like social media there are various businesses from all over the world that make profiles and they try to endorse their product on the particular media platform. When any kind of infringement takes place, there are jurisdictional challenges that arise and cause issues. It is difficult to determine how to move forward and to what legal authority must the case be taken for it to be adjudicated in a judicious manner. This also makes the process highly time consuming for the parties involved.

5. Data Privacy Concerns –

As technology advances and data becomes a valuable commodity, the challenges of protecting both intellectual property rights and individual privacy have grown exponentially. Digital content consumption generates massive amounts of personal data, creating many legal and ethical dilemmas. Achieving this delicate balance requires ongoing collaboration between legal experts, policymakers and advocates. As the digital ecosystem becomes more complex, there will be a need for a flexible approach to intellectual property and privacy protection.

6. Fair Use –

Fair use is an integral part of an intellectual property dispute as it can act as a valid defence in the courts of law and can help in reducing the liability of the accused party. It is difficult for courts to assess the situation in the complete manner and as all aspects may not be considered it becomes difficult to claim fair use. Existence of all facts and evidence plays an important role in making sure that the fair use defence can be used by the party to prove their innocence.

7. Limited Traditional Mechanism –

The courts find it difficult to use traditional legal mechanisms while deciding upon a certain matter. Due to the complexities and nature of social media it is not possible for them to use the usual legal principles while examining the case. The facts and circumstances surrounding the particular must be taken into account and considered before any decision can be regarding the alleged infringement.

Digital technologies have brought about a paradigm shift among businesses in everything they do, marketing them, and protecting their intellectual property. As this research shows, social media platforms have become extremely powerful marketing tools and very complicated legal battlegrounds for trademark protection. The intersection between trademark law and the digital platforms presents complex challenges that will necessitate new and adaptive legal approaches.

The legal frameworks surrounding trademark protection, particularly within India, expose some incredibly critical gaps that need to be addressed. Existing laws might serve as the foundation to protect intellectual property rights, yet they often stand powerless to combat the rapid and evolving digital infringement. Further introduction of complexities through social media, with jurisdictional problems and blurred lines between contention of fair use and infringement, maddens the enforcement.

Inherent challenges will require brands to incorporate proactive techniques to strengthen protection-aided by technology. These can include advanced monitoring systems to flag unauthorized use of trademarks, consumer outreach to raise awareness of counterfeit products, and calls for legal reforms to address inherent issues presented by digital platforms.

Creating space for interaction among lawyers, legislators, and technology players would allow for a fair balance between innovation, interest, and intellectual property rights-and reputation protection for brands within a just digital marketplace.