Fluid Trademark Examples and Emergence Pre and Post the COVID-19 Era

GLA University - B.Com | LLB | B.A.
GLA University | B.Com | LLB | B.A.

With technological advancements and brands’ creative proactiveness, we see many fluid trademark examples in India and the world. Especially after the Covid pandemic, many brands added elements to their trademarks to stay relevant. However, despite an overhaul of creative fluid trademarks, Indian courts haven’t seen many cases related to fluid trademarks. In addition, the Indian law doesn’t specifically mention the same. Highlighting international jurisprudence and case laws, Saumya Saxena details the meaning, scope and importance of fluid trademarks in India and elsewhere.

fluid trademark examples

By Saumya Saxena, a fourth-year Student pursuing BBA LLB from Symbiosis Law School, Noida. 

Introduction

Fluid trademarks refer to a method of capturing different versions of a trademark, which may not be so different from each other. Fluid trademarks share the same characteristics as traditional ones. They can be a word, phrase, symbol, or design identifying and distinguishing a product or service source.[1]

They should be designed in a way that different versions of a trademark identify with the same source. There are several ways in which it is possible to use fluid trademarks to build an image and to achieve market recognition.

Fluid Trademarks have evolved into a dynamic marketing tool. Fluid trademarks are variants of registered trademarks that coexist with the underlying marks and are created to increase market demand and build brand loyalty.

These variants usually keep some of the original trademark’s characteristics when adding new ones. Thus, the theory behind fluid trademarks is in sharp contrast to conventional trademarks. The latter focuses on using uniform words, images and symbols to differentiate the owner’s goods/services. On the other hand, fluid trademarks capture the consumer mind through creative, eye-catching and fresh interpretations by slightly tweaking the original design.

Fluid Trademark Examples: Understanding the Concept

One of the prominent fluid trademark examples is Google’s Doodles. Google Doodles show variants of the Google mark on the homepage, which changes regularly to keep with various regional and international events and festivals. These variants are based on the underlying google mark.

The Amul Girl, used frequently in cartoons to promote the brand in the form of a visual commentary on the current political and social problems, is one of the prominent fluid trademark examples. Similarly, Google also updates its homepage as an internationally respected internet giant using a Google Doodle to commemorate notable events.

Challenges to Using Fluid Trademark

Using fluid marks is a risky business since each alteration in the logo deviates from the original trademark brand’s identity. In addition, for brands that aren’t well-known, using a fluid mark might not be the best idea because it may confuse the people about the brand’s original trademark. Moreover, there is a high chance of diluting a trademark by having too many fluid trademarks. However, that might not always be the case.

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If used prudently, fluid trademarks help brands create awareness about their products/services. They can also educate the people about the dynamic nature of the brand, creating goodwill. For example, Google uses Google Doodle on special occasions but not all of the time.[2]

If the trademark owner has not applied to protect its variants, they cannot assert infringement if a third party uses signs that refer to the variants. Only the registered underlying mark is protected in such cases.

However, the owner can seek relief by suing against identical variants or violating the copyright of creative elements in the variant.

When adapting to fluid trademarks, brands must follow a well-thought-out strategy. They must decide whether or not to file a fluid trademark and how closely they can monitor their fluid trademarks. The claimant would have to describe each of the various variants of the trademark to capture the very essence of a fluid mark for a trademark application.[3]

In the United States, the Trademark Manual of Examining Procedure lays down certain requirements, which reads:

“The modified mark must contain what the essence of the original mark is, and the new form must create the impression of being essentially the same mark. The general test of whether an alteration is a material is whether the mark would have to be republished after the alteration to fairly present the mark for opposition purposes. If one mark is sufficiently different from another mark to require republication, it would be tantamount to a new mark appropriate for a new application.”

It is essential to file separate trademark applications for each fluid mark[4] because different brands come up with fluid trademarks at different times. Also, when adopting a fluid trademark, brands should still use the original trademark to prevent the latter from being cancelled or abandoned due to non-use.

Furthermore, brands should keep an eye on internal use, avoid haphazard changes and track possible trademark violations by third parties.

Registering Fluid Trademark

Trademarks are a sign of continuity and perpetuity of a brand. They are advertised to gain market recognition; hence, it is powerful enough to continue to exist. Fluid trademarks are not protected under the Trade Marks Act, 1999 of India. However, there exists a provision relating to series marks. Section 15 of the Draft Manual of Trademarks, 2015, says:

“person claiming to be the proprietor of several trademarks in respect of the same goods or services, which, while substantially resembling each other in the material particulars, yet differ in respect of the matter of a non-distinctive character, which does not substantially affect the identity of the trademark”.

However, things remain complex as one cannot register the mark because Section 15 expressly specifies that a trademark application cannot be updated to be turned into a series trademark until a single trademark has been registered. Thus, Section 15 does not account for the complexities of those trademarks. Therefore, it is difficult to say if the current Indian position on trademarks is sufficient for fluid trademarks.

Standard of Distinctiveness

There can be a wide variety of fluid trademark examples that offer non-distinctiveness, which can be an issue. For example, a situation where a trademark does not resemble any of the fluid versions gets replicated. However, it may be a case of passing off if the fluid versions are not registered. In such a case, what constitutes a non-distinctive feature in a fluid trademark can be a loophole.

In Louis Vuitton Malletier v. Dooney & Bourke, Inc.[5], the plaintiff, Louis Vuitton, contended that a stylised version of its toile monogram (the LV initials) had been copied onto its goods by the defendant.

LV argued that it had stylised its original trademark into a multicolour version over a white background. And Dooney & Bourke introduced the ‘It Bag’ line, which featured the ‘DB’ monogram in multicolour over a white background, similar to LV.

In accessing the likelihood of confusion, the court focused ‘on the similarity of the marks sequentially in the context of the marketplace rather than in a side-by-side comparison’. Ultimately, it remanded the matter to the lower court to determine the likelihood of confusion between the two marks.

Indian courts haven’t had any case of infringement of a fluid trademark yet. In India, a passing off claim is available even against unregistered marks. As a result, even though a brand’s fluid mark is not registered, it will be able to enforce its rights.

In Proctor and Gamble vs Joy Creators[6], the Delhi High Court held that infringement does not necessarily mean that a mark must be a carbon copy of a registered trademark. Further, the Court observed:

“It will be sufficient if the plaintiff is able to show that the trademark adopted by the defendant resembles its trademark to a substantial degree, on account of extensive use of the main features found in a trademark.”

A trademark owner must express the scope of the fluid trademark variant of which it asserts rights clearly and concisely. Although the original mark may have gained distinctiveness or secondary significance, not all original trademark variants may have acquired instant distinctiveness.

Thus, while fluid trademarks may give considerable freedom and scope to be innovative with trademarks, the statute may not always prove the right to monopolise those non-distinctive characteristics.

The question of likelihood leading to confusion needs a strict discharge of proof. In future, it will be interesting to see how Indian courts interpret the rules of trademark law in cases concerning fluid trademarks.

Fluid trademarks during COVID-19

Amidst the Covid pandemic, there has been a spurt in using fluid trademarks where various widely known brands tweaked their logos—for instance, McDonald’s redesigned its classic yellow ‘M’ in the red background. Similarly, the wheels were spaced further apart in the four-wheel logo of Audi. And BMW saw the logo spaced with a note reading ‘thanks for keeping distance’.  While the Starbucks mermaid has a mask over her face, Nike’s swoosh says, ‘Just Don’t do it,’ and the list goes on.

However, as businesses attempt to reinvent themselves according to the times, they may face inevitable roadblocks to IP security that the brands need for their new logos.

Obviously, the Covid-19 pandemic was unforeseeable. Nevertheless, brands continue to be competitive over time and to preserve their mass appeal. And in that respect, fluid trademarks are a unique way to stay relevant and adapt to international developments.

There are no provisions for getting a trademark registered with all the possible variations. Separate registration of the variants of a trademark is not feasible for mainly two reasons.

First, it is a long process, it will require numerous applications, and there might be chances that by the time the mark is registered, the issue/event that the fluid trademark is meant for ends. Take any fluid trademark example during covid. It will remain relevant until the pandemic gets over. After that, the brand will resume its original trademark.

Secondly, it is an expensive process to register all the variants of a trademark. The registration fees and the legal fees of the application are costly. Even if the fluid mark is registered in time, it is improbable that it will run for long. For instance, in India, a trademark becomes vulnerable to cancellation if it has not been put to genuine use for a continuous period of five years after registration and three months before the date of filing the registration application.[7]

Due to its changing nature, it is challenging to protect fluid trademarks. Therefore, brands should focus on the core trademark, which forms the basis of the variants to protect such trademarks.[8]

The changes made in the core trademark should be minimal so that the variant still constitutes genuine use of the trademark as registered. However, whether a change/modification in the trademark is minimal or not is the discretion of the Court. So, there is no certainty if the Court will decide in favour of a brand.

The concept of fluid trademarks is still ambiguous in India. However, brands can still adopt fluid trademarks relevant to the pandemic and continue to use the modified trademark as it would be relatively short-lived. They can switch to the original trademark after normalcy retains.

Owners who plan on returning to using their registered trademark after using a fluid trademark for a few months need not be concerned as Indian courts are yet to consider a case of fluid trademarks. However, it would be interesting to see how the jurisprudence around this issue develops in the coming years.

Can Brands Avoid Legal Hassles When Using fluid Trademarks? A Few Suggestions

The brand owners may consider the following to avoid legal hassles when enforcing a fluid trademark:

  • Adopt a Strong Mark: To avoid confusion among the customers, brands must adopt a reasonably strong mark to gain recognition among their target public. Such that they can associate the trademark with the brand.
  • Conduct an availability search: Before using a fluid trademark, brands must ensure that the mark does not infringe a third party’s trademark.
  • Uninterrupted Use: When adopting a fluid trademark, brands must keep using the original trademark. As a result, the original mark will not be at risk of being cancelled due to non-use. Further, each variant comprising a fluid trademark should retain the source distinguishing features of the underlying mark, such as colour or font.
  • Terms of Use: They could include ‘rules for proper usage’ on the website or manual, allowing the trademark’s usage in a particular manner subject to conditions. For example, Google highlights the ‘Do’s and Don’ts’ as part of its brand help centre available on its website.

Conclusion

Fluid trademarks are more than just a trademark and have emerged as an excellent marketing strategy for businesses across the globe. They are instrumental for brands to engage with their customers and make a long-lasting impact on the target audience.

Fluid marks help brands grow. They bring greater awareness of the brand, potentially leading to customers recognising the brand as dynamic. These marks should be used by a well-known and established brand, as fluid trademarks can play a crucial role in pushing the limits of a trademark in new ways.

Redesigning a trademark in different ways while retaining its original elements will enhance rights in the original mark by expanding its market reach, thus strengthening the registered trademark.

In this digital era, fluid trademarks are vital because they have significant trade worldwide. And any case of trademark infringement would result in a considerable loss for the brand and the customers of such products worldwide. However, since it is relatively new, no regulation or case laws have yet dealt with fluid trademark examples.

Fluid trademarks could bring serious concerns that may need readdressing. Hence, every country needs to incorporate provisions relating to fluid marks in its existing trademark legislation.

Fluid trademarks are here to stay. They can often be seen as challenging a trademark’s permanent existence. However, only well-established brands that can afford them and not face a looming infringement risk can make full use of fluid trademarks.

Endnotes

[1] Trademark, Patent, or Copyright?, U.S. Patent and Trademark Office (Dec. 23, 2011), https://www.uspto.gov/trademarks-getting-started/trademark-basics/trademark-patent-or-copyright.

[2] Lee Curtis, Fluid trademarks: Keeping them underweight, TRADEMARKS AND BRANDS ONLINE, (Apr 11, 2021, 10 am) https://www.trademarksandbrandsonline.com/article/fluid-trademarks-keepng-them-watertight

[3] Perry J. Viscounty, Jennifer L. Barry and David B., Fluid Trademarks: All Fun, or Some Risk?, INTELLECTUAL PROPERTY TODAY, (Jun. 29, 10:04 PM), https://www.lw.com/thoughtLeadership/fluid-trademarks-all-fun-or-some-risk

[4] The Trade Marks Act, 1999, § 15, No. 47, Acts of Parliament, 1999 (India).

[5] Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108 (2d Cir. 2006).

[6] Proctor and Gamble v. Joy Creators, 2011 (45) PTC 541.

[7] The Trade Marks Act, 1999, § 47, No. 47, Acts of Parliament, 1999 (India).

[8] Proctor and Gamble v. Joy Creators, 2011 (45) PTC 541.

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