This guest post under the RFMLR Blog Series on Evolving Landscape of Intellectual Property Rights is authored by Drishtana Singh (Independent Legal Practitioner and Consultant practicing at the High Court of Punjab and Haryana) and Manan Parmar (Corporate, Commercial and Immigration Law Advisor, SMA Legal, Chandigarh).
Trademarks are any mark, logo, sign capable of distinguishing the products and services of a particular source from another. The essential feature of a trademark is continuity and perpetuity. This allows the consumer to build long-standing associations with the brand or service provider. However, markets across the world are rapidly changing, growing and evolving with transient consumer behaviour. All this is majorly attributable to a wide spectrum of choices available to the consumer and vast and readily accessible information about the same. This dynamism has resulted in the growth of innovation in brand marketing that challenges the conventional norms which require a trademark to be static, unchanging and symbols that develop familiarity with time.
Contextually, fluid trademarks are a result of this phenomenal dynamism where they are an increasingly popular marketing tool. Fluid trademarks tend to engage the consumer and attempt to maintain their interest in the brand. A fluid trademark can be understood as a variation to an already established trademark, lending it a dynamic character that continues to evolve alongside the brand. This allows the trademark to grow and adapt in these fast-changing times.
Fluid marks vary from simple decorations (such as Google's Doodles), reinterpretations of the mark in different media channels (such as the Absolut Vodka Bottle mark) or even to background switching (such as the well-known Nickelodeon wordmark).[i] The different ways in which a traditional trademark can be represented as a fluid trademark are:
by ornamenting the trademark,
changing background of the trademark,
filling a frame like the icons of the television channels,
employing moving designs,
adopting multiple and ever-changing designs.[ii]
For instance, when referring to the ever-changing Google doodles, it does not mean that every google logo is different. What it means is that the basic outline and essence of the Google logo is preserved, while creative liberty is taken in changing the structure and form of the logo. Strategically speaking, such liberties are taken keeping in mind the need to capture the consumers’ attention as well as to build on the socio-cultural impact of Google as an enterprise in the modern world, amongst Google’s many such endeavours.
Similarly, when reference is made to the reinterpretation of the ‘Absolut’ vodka bottle mark in different media, we understand it as the creative liberty given by the company to various artists to use the signature bottle in an effort to promoting artistic opportunity and liberty.
Aside from the impact of the brands and their logos on the socio-cultural environment, some brands have also resorted to modifying their logos in order to send across social messages, such as prevention during this deadly pandemic. Brands such as Zara, Audi, MasterCard, Mercedes, McDonald’s and Volkswagen, to name a few, have made alterations in their logo to signify social distancing as a preventive measure to battle CoVID-19.
2. KEY CHALLENGES TO THE ENFORCEABILITY OF FLUID TRADEMARKS
In the constant race for recognition, success and branding innovation, brands often employ various ways to engage the consumer. However, the legal enforcement of these fluid trademarks is yet to be tested. It cannot be denied that the concept of fluid trademarks has found great success and popularity in this day and age of technological revolution. Under Indian law, there is no legislative protection or precedent to rely on nor has there been any dispute of such nature to necessitate the formulation of protections to that extent. In fact, a quick browse through the list of Google’s registered trademarks is surprising. Not a single Google Doodle has been registered as a trademark.[iii] Thus, the idea of fluid trademarks itself is not yet a legal concept and the key challenges thereto are listed out below:
1. Absence of Protection Mechanisms: On analyzing the international frameworks (such as bilateral and multilateral treaties, conventions and agreements, for instance, the Agreement on Trade Related Aspects of Intellectual Property Rights ("TRIPS"), among others), and national legislations (such as the Indian Trademarks Act, 1999; the Canadian Trademark Law; the Lanham Act, 1946 and Anti-Cybersquatting Consumer Protection Act, 1999 (USA), among others), it can be safely concluded that there is no concept of or any explicit protection provided to fluid trademarks.[iv] Furthermore, there are hardly any judicial precedents laid down yet, to provide protection for such trademarks. Therefore, the absence of international and domestic legal mechanisms for the protection of fluid trademarks remains one of the key challenges to the usage and enforcement of fluid trademarks.
2. Rapid Unauthorized Variations: The absence of any legal framework, coupled with the dynamic nature of fluid trademarks might result in an increase in unauthorized variations by third parties.[v] “In Spring 2019, the Organisation for Economic Cooperation and Development ("OECD") and the [European Union Intellectual Property Office] ("EUIPO") clarified this by updating figures on the scope and scale of IP crime, revealing that the world trade in fake goods is now worth $509 billion, or 3% of world trade. Almost 7% of products imported into Europe are now counterfeit, corresponding to €121 billion per year.” [vi] As can be seen from the trademark images (of Google, Absolut and Nickelodeon), there are no limits to a fluid trademark. If there are no laws to restrict a third party from using the basic logo in its own interpretation, the possibilities of infringement and unauthorized variations are limitless. If one were to add one more image of their own whereby the basic Google outline (or the Absolut bottle mark) is the same, but they have their own underlying message through a different drawing, what is to stop them from using that image to market their own goods or services and profit from the multi-national company’s logo?
3. Loss of Core Essence of the Underlying Trademark: Excessive and random variations may weaken existing rights in the underlying mark, as well as, in the new variations adopted.
4. Cancellation Due to Non-Use: Furthermore, it might also lead to the cancellation of the original underlying trademark, due to the possibility of its non-use, as a result of constant use of its variations.
5. Confusion: Due to the constantly evolving nature of fluid trademarks, proper branding is necessary and indispensable, especially for newly established and not so popular brands. Unless the brand owner establishes its brand beforehand and prepares its customers, they may fail to recognize the brand when a new variant appears. [vii]
3. THE WAY AHEAD
To tackle the risks mentioned above, as well as, other foreseeable and unforeseeable challenges, there is a dire need for a roadmap to be drawn. Brand owners need to be very careful and ever so vigilant in using fluid trademarks. Some of the practices that can be adopted are:
1. Making Use of the Existing Protections in Place: Until new laws and mechanisms are formulated for the protection of fluid trademarks, the existing laws and mechanisms shall be made use of, in order to provide some security to such trademarks. For instance, by using the existing trademark laws, one can get protection for each variant of a fluid trademark, separately.[viii] Alternatively, the protections and mechanisms for other intellectual properties can also be utilized. For example, “Copyright protects original works of authorship fixed in a tangible medium of expression, and therefore likely would cover original designs that are used to fluidize a trademark.”[ix] What this means is that through getting copyright protection, the original work (such as the basic Google outline, the Absolut bottle mark or the colour and letters of Nickelodeon) can be protected, barring a third party from utilizing the same. With specific reference to India, while not exactly fluid trademarks, the Trademarks Act, 1999 does provide for the registration of a Series Mark under Section 15 and Associated Marks under Section 16. The downside with the same is that trademark registration in India is a tedious and lengthy process that involves a few months and may not be ideal in a dynamic marketing campaign.
In case of violation, the aggrieved party may, under the Indian Trademarks Act, 1999, bring an action for passing off against a third party for unauthorized use of a fluid trademark.
2. Use of a Strong, Established Mark: If the underlying trademark on which variations are made is strong and has been established in the market, it avoids confusion among the consumers, when a trademark is modified time and again, with different variations.[x] Underlying trademarks should be established with a history of use and consumer recognition so that the trade and general public can understand and relate to the variant form.
3. Continued Use of the Underlying Trademark: A brand owner must ensure that the basic underlying trademark is also in constant use, alongside its numerous variations, if any. This avoids the risk of weakening and/or abandonment of the original trademark. The main characteristics of the underlying mark should remain intact in the variant mark otherwise the traders and public may fail to recognize it in its variant form, thereby defeating the very purpose.[xi] Furthermore, the essential characteristics of the underlying mark should be used concurrently through other modes (e.g., product packaging, business letterheads and published materials). In fact, it would be ideal to ensure the presence of the underlying mark alongside the variable new mark wherever possible throughout the branding and marketing process so as to aid the association between the underlying trademark and the parent brand.
5. Timely Vigilance: Brand owners should, time and again, make sure to conduct trademark searches in order to ensure that their trademark or its variations are not being used to their own detriment, in an unauthorized and unlawful manner.[xii] Furthermore, a brand owner should always be vigilant in all aspects and take actions against any sort of infringement or violation of an intellectual property right.
Charles Dickens was right when he said that “It was the best of times, it was the worst of times, it was the age of wisdom, it was the age of foolishness…”[xiii]. Today, in the global economic scenario, on one hand, the opportunities for business growth and brand establishment are unique and endless, while on the other hand, counterfeit products comprise about 3% of the world trade. The need for a comprehensive legal framework to protect the interests of businesses and brand owners is higher than ever before. Time and again, the Indian courts have held that an impugned trademark need not be an absolute replica of the original in order to establish a case of infringement. The one claiming infringement has to establish a substantial degree of resemblance between the original and the impugned trademark as per established laws.
One avenue that can be explored for protection is tacking on. This doctrine of tacking on is fairly recognized in the American courts and it allows the user to claim priority on a mark based on the first use of a similar but technically distinct mark. This is effective as the time and money invested in the previous trademark can then benefit the new one. However, the standards for tacking on are very strict and is only allowed if the marks are virtually identical.[xiv] The US Supreme Court has determined that tacking is a question of fact to be resolved by a jury, under the guidance of careful jury instructions that make the standard clear. The Courts have held that the standard is “exceedingly strict” and tacking is only allowed only when the earlier mark and the revised mark are so similar that they convey the “same commercial impression” and the consumers would regard both as the “same mark”.[xv] It is evident that tacking is only useful in cases where the new mark is similar to the old. Although the term is not popular in the Indian trademark scenario, it has the scope of legislative development as it allows the goodwill created by the old trademark to be carried on to the new one resulting in the true fluidity of the trademark.
Legislation is always a step behind innovation; however, it is innovation that marks the growth of legislation. While there exist legal remedies that may be creatively explored should a dispute of such nature arise, these existing protections lack the dynamic foresight in this growth and vision-oriented economy. While we wait for the lawmakers to lay out these protections in letter and spirit, reliance on the above-mentioned suggestions and the implementation of the same would go a long way in the protection of fluid trademarks.
Endnotes: [i] S Sengupta & NV Saisunder, Fluid trademarks – Wave of the future, (June, 2020), Lexology, available at https://www.lexology.com/library/detail.aspx?g=962298b3-37ec-44b9-ae04-e0c596e6c434. [ii] Id. [iii] Google, Permissions, trademark, Logos-list, https://www.google.com/permissions/trademark/logos-list/. [iv] SK Singh, Trademark in Digital Era: Issues in Protection of Fluid Marks Analysis, (2018), 1 IJLMH 4-5. [v] PJ Viscounty, JL Barry & DB Hazlehurst, Fluid Trademarks: All Fun, or Some Risk, (February, 2014), Intellectual Property Today, Latham and Watkins LLP, available at https://www.lw.com/thoughtLeadership/fluid-trademarks-all-fun-or-some-risk. [vi] P Lewis, Counterfeiting and Organised Crime, (April, 2020), World Trademark Review, available at https://www.worldtrademarkreview.com/anti-counterfeiting/counterfeiting-and-organised-crime. [vii] Singh, supra note 4, at 2; [viii] L Pearson, Fluid Trademarks and Dynamic Brand Identities, (2014), 104 Trademark Rep 1411 at 1431. [ix] Viscounty et al., supra note 5 at 30. [x] S Shekhar, Fluid Trademarks: Advertising and Marketing Innovation in Intellectual Property Regime, (June, 2020), 2 NMIMS SLR 17 at 31. [xi] J Pyhälä, E Holmila, Are fluid trademarks your cup of tea?, (September, 2013), World Trademark Review, available at https://www.google.com/url?sa=t&rct=j&q=&esrc=s&source=web&cd=&cad=rja&uact=8&ved=2ahUKEwjm5c2L4uTyAhUDYysKHZnEDhIQFnoECB4QAQ&url=https%3A%2F%2Fwww.worldtrademarkreview.com%2Farticle%2FC0635419E7E4518A66851B859B86D632B98FEA64%2Fdownload&usg=AOvVaw2KKaC8CcJxFUYZ0f1H_7Q8. [xii] Viscounty et al., supra note 5 at 31. [xiii] Charles Dickens, A Tale of Two Cities, (Penguin Books, 2003) [xiv] Alan L Durham, The Trouble with Tacking: A Reconsideration of Trademark Priority, 54 Houston Law Review (2017), U of Alabama Legal Studies Research Paper No. 2986947, available at https://ssrn.com/abstract=2986947. [xv] Ibid.