By – Nidhi Tandon
Most of us use Google every day and many of us look forward to seeing what the Google Doodle of the day would be! The eye catching ‘Google Doodle’ changes on a regular basis to reflect regional and international events, festivals and personalities but all based on the underlying GOOGLE mark. “Fluid trademarks” are what they are called.
As the name suggests, Fluid trademarks are based on the original trademark but rejigged intentionally to appear as a variant that retains the basic elements of the original mark so as to maintain source identification. Some of the famous fluid marks are Perrier bottles and MTV Channel logo. Another significant example is the mascot, ‘Amul girl’. Over the years, this mascot, a hand-drawn cartoon of a young Indian girl in a polka-dot dress, has been used to mark various events of national and political importance.
Fluid trademarks are considered to be excellent marketing tools but their enforceability remains challenging in India.
Why Fluid trademarks?
Traditionally, a trademark is a two-dimensional static term/design used for identifying goods and services. In the digital era, trademarks have evolved from static signs to interactive marketing tools. Given the tough competition, it is important to come up with an eye-catching trademark that will capture the consumer mind. It is in this context that Fluid trademarks have become a dynamic marketing tool and an increasingly popular mode of branding.
Protection accorded to Fluid trademarks
Fluid Trademarks have not been legally tested yet and may be problematic when it comes to enforcement. Since the trademarks are not being used in their original (registered) form, they may be vulnerable to non-use cancellation proceedings. However, India provides common law protection to fluid trademarks in the same way as an unregistered trademark and a passing off action may be maintained against the use of a similar variant.
Fluid trademarks can be registered as a series of marks – several trademarks are registered in respect of the same or similar goods or services – while they resemble each other in their material particulars, they can differ with regard to non-distinctive elements (i.e., ornamental changes) that do not substantially affect their identity. Needless to say, registering as a series mark is a costly affair.
In any case, Copyright law may also be particularly helpful to protect the artistic elements in the new variant of a brand as it grants an inherent right to the owner and does not require registration. However, there are no judicial precedents in this regard till date.
Challenges to using Fluid trademarks
The potential challenges in using Fluid trademarks are:
Confusion among consumers: Random variations cause confusion in the minds of users as to whether it is the original brand or merely a knock-off. All efforts to create an association between consumers and the brand are futile if consumers cannot identify the original mark.
Loss of essence of underlying mark: Excessive and random variations dilute the value of the underlying mark.
Abandonment of underlying mark: Non-use of trademarks results in cancellation based on a claim of abandonment despite holding a registration. If the rights holder uses new variations such that he fails to use the underlying mark, the mark could be deemed abandoned.
Protection only to underlying mark: In case the trademark owner has not applied for trademark protection for its variants, she cannot claim infringement when a third party uses signs that correspond to these variants. The protection only extends to the registered underlying mark. However, the owner can obtain relief through passing off action against use of similar variants or infringement of copyright of the artistic elements used in the variant.
All you need to know when using Fluid trademarks
Registration of the underlying trademark is necessary as it may not be practical to register every single variant especially because they are intended to have a short shelf life. However, the variants can be registered as a series of marks.
The essential characteristics of the underlying mark should be used concurrently through other modes (eg, product packaging, business letterheads and published materials);
Underlying trademarks should be established with a history of use and consumer recognition so that the trade and public can understand and relate to the variant form.
The main characteristics of the underlying mark should remain intact in the variant mark; otherwise the trade and public may fail to recognize it in its variant form, thereby defeating the very purpose.
Fluid trademarks help to popularize the mark. However, it should be used wisely given that the concept is yet to be tested in Indian courts and can be safeguarded only though common law protection that relies on the original registered mark. When used strategically, Fluid marks can enhance the brand and help build a robust trademark portfolio.