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FLUID TRADEMARKS - LEGAL IMPLICATIONS AND ITS USE IN TIME OF COVID-19

What are Fluid Trademarks?

Fluid trademarks are unconventional marks that are neither defined under the Indian Trade Mark Act, 1999 nor mentioned in any international treaty or regulation concerning intellectual property. However, as the name suggests, these trademarks are ever-changing. Fluid marks involve the creation and use of a variety of different, frequently changing variations of a particular trademark, whose variations coexist alongside the original mark. These variations typically retain certain features of the underlying mark but include new design elements.

The most prominent example of a company that has vigorously used fluid trademarks over the internet is Google. Although the company has registered its original trademark under a particular font and colour scheme, it regularly offers variations to its mark based on the events and festivals of that particular day. Google refers to them as Google Doodles”. One such example being, where Google remind people to ‘Wear a Mask. Save Lives’ through its animated doodle.

Use of Fluid Trademarks During COVID-19

The use of fluid trademarks has shot up during the times of COVID-19. The concept of social distancing, which was brought to light during the pandemic, has taken over brands and is being depicted through variations of their trademarks.

The novel Coronavirus pandemic has brought about several changes in the most fundamental aspects of our lives. This does not only relate to individuals, but it is also seen in the changes taken up by companies in order to survive during such unprecedented times. One of the ways adopted by brands is by using what is known as ‘fluid trademarks’

To give a few examples, McDonald's had their iconic yellow letter 'M' spaced out to promote social distancing. Similarly, the round rings in the four-wheel logo of Audi were spaced farther apart, the Starbucks’ logo was modified to show the famous twin-tailed mermaid wearing a mask over her face, and Nike’s play inside campaign, are a few in the list of brands that tweaked their popular trademarks to stay in trend. The German automaker Volkswagen posted a short video on YouTube promoting social distancing. In the video, Volkswagen’s characteristic stacked VW logo was revamped to feature a gap between the two prominent letters

All these above examples show the use of fluid trademarks by various companies to engage with their customers and keep their mark alive. However, if too many different variations of an underlining mark are created, chances are that they might create confusion in the mind of the customer, and in a way, it may even weaken the original trademark.

Therefore, it is important to note that while companies may choose to get creative and endorse the newest trends in response to the global empathy towards COVID-19, there are a few things to be kept in mind as respects to the legal repercussions of the use of these fluid trademarks.

Challenges/Risks in Using Fluid Trademarks

Since fluid trademarks are dynamic in nature and have a short lifespan, registration of the mark is not the first priority of the brand owner, as registration of a trademark is a long process that involves filing, examination, publication of the mark that is sought to be registered. This brings up challenges such as infringement and passing-off of the fluid trademark. One solution is to register the template and change the internal aspects of the mark. However, since the law relating to fluid trademarks are not very well established in India due to lack of statutory recognition, the holders of such marks should ensure that they have a good intellectual property strategy to protect their privilege over the mark.

However, if a company does choose to file separate trademark applications each time it creates a new variant of its original trademark to avoid third-party interference, it may still be problematic. One reason is that the registration process is lengthy. To take the example of a brand that has developed a fluid trademark relating to COVID-19, the registration process might take long and by the time you get the mark gets registered, chances are that the pandemic might end. Furthermore, since the altered mark is unlikely to be put to genuine use after registration, the mark may become vulnerable to be cancelled for non-use. It is also an expensive process to file for registration for all the variants of your trademark.

Representation of a particular trademark in various forms may only be useful when the mark is well known in the trade and to the public at large. Else, the very purpose of creating such variations could stand defeated. It would not be an easy task for right holders to challenge third-party infringements when the mark is subject to continuous alterations and no consistent use of variants of the mark has been established.

Protection under Indian Trademark Laws

As stated above, there are no provisions relating to fluid trademarks under the Indian trademark laws. However, under the Indian Trade Marks Act, the only section that remotely relates to fluid trademarks is Section 15. Section 15 contains a provision for registration of a series of trademarks; but a provision like Section 15 only works when all variants can be anticipated for representing the trademark. A situation like the novel coronavirus pandemic could not have been anticipated before. Section 15 does not allow amending a trademark application to be converted into a series trademark after the registration of a single trademark has taken place. Thus, it cannot be said that the provision of law on series trademarks sufficiently accounts for protection of fluid trademarks.

The fact that there is no statutory protection under Indian laws, other than common law remedies for fluid trademarks establishes that there is a dire need for an addition in the existing laws for protection against infringement of such trademarks. Since the trend of brands spending heavy amounts on their social media platforms to engage with customers and keep their brand alive has arisen, protection against infringement of these marks has become a top priority as it can otherwise cause huge losses to their business as well as their goodwill and reputation.

While formulating legislation for the protection of fluid trademarks, it is important to keep in mind the dynamic nature of such marks. Since the changing nature of fluid marks are difficult to be protected, the focus should be on the core trademark on which the fluid variants are based; so that the fluid marks related to that main trademark will be easily identified and protected

Things to Consider Before Adopting a Fluid Trademark

Considering the risks involved in adopting a fluid trademark, there are a few things that brands must consider while using a fluid trademark. The first and the most important one is to identify that the underlying or original trademark is a strong mark. The maximum use of fluid trademarks can only be done by well-established brands that can afford to make a statement with their trademarks and not run a looming infringement risk

Further, it is also advisable to create a variation of a trademark that is registered, because the creative interactivity of the fluid mark may encourage others to come up with their own inventive versions. Another important factor is to continue to use the initial trademark in its original form. This will allow the brand owner to invoke the prior use doctrine, which gives priority to the first user of a mark, and avoid abandonment of the trademark. It is also important to retain some basic features of the original mark while creating its variations, this helps in avoiding confusion in minds of the public and they can easily identify and associate it to the original trademark. For example, when Zara redesigned their logo, customers began to share their thoughts over social media.

Once a variation of the original mark is created, it is also important to do a thorough search and identify that the fluid mark is non-infringing to any of the already existing trademarks. A brand owner may also consider protecting his fluid trademark under various other intellectual property rights such as copyright, design, or patent, which are not mutually exclusive of protection granted under trademark law. Moreover, if a brand owner chooses to permit fan use and parodies of its fluid trademarks, it should consider drafting terms of use that cover fan use of its trademark. For example, Google maintains a "Rules for Proper Usage" webpage regarding the use of its mark.

Lastly and most importantly, brands must have a clear enforcement strategy which encompasses including strategies for monitoring the brand in the market and investigating infringers and counterfeiters. Enforcement, although important, needs to be done with due care and caution as it may be against the customers and fans of the brand itself. Many a times, the infringement is done by a user or fans of the brand to promote or associate themselves with the brand. For example, a fan base of a popular web-series or a famous movie, such as fans of Harry Potter, commercially exploit the trademark or copyright. If there is no clear enforcement strategy, it may lead to the risk of alienating the brand's users. Since the concept of fluid trademarks is still in the grey area, it is important for the brand owner, designer, and intellectual property lawyers to all work together with the common goal of creating an interesting and appealing new variation of the mark without causing any harm.

Conclusion

Fluid trademarks provide for a new variance to an existing trademark, they can be a great opportunity for brand owners to connect and interact with their audience with the changing times. If the risks and challenges are looked into with caution, brands can enhance their intellectual property portfolios. In this digitally transforming world, the use of fluid trademarks has proved to be a powerful marketing tool for many brands, and thus, there is a vital need for proper legislation to be adopted for the protection of such marks. The law relating to fluid trademarks can be improved by the legislation, by adding a provision recognising the use of such marks. This will help in determining the parameters of its use.

Title Image Source: 1st Formations


This article has been written by Urvi Karolia who is a final year law student from Mumbai University. I am extremely passionate and interested in the field of Intellectual Property and particularly in Trademark Law.