"Don't reinvent the wheel, just realign it."
-Anthony D'Angelo
Dynamism and volatility precisely describes the current functioning of the world. On the contrary, reputation and stability of the brand identifies as the fundamental component of the niche arena of trademarks. With the advent of globalization, information technology and constant evolvement, the concept of trademarks has also seen adoption of unconventional practises. Fluid Trademark arises as such a non-static, unconventional notion. Fluid trademarks refers to modifications made to an underlying trademark to expand and encourage more consumer engagement. In essence, a fluid trademark can be described as a mark that is based on an already existing trademark (at most times, registered trademark) but with minor replacements and substitutions. The conversions are made in a manner that the basic and identifying factor of the mark is not tampered with and the mark can still be identified by the relevant consumer base.
Purpose- Extensive usage of a particular trademark is one of the prime components that builds the recognition and reputation of a brand. But with instability and volatility, competition is introduced into the market, which purports brand owners to acclimatize to subsisting trends such as bringing about variations in the existing mark.
The emergence of the global pandemic COVID-19 saw with it the rise in brands using this novel concept to promote social distancing. For instance-
McDonald's restructured their underlying pioneer yellow 'M', with a distance between both the halves of M.
Subway introduced a mask to their existing logo, with an additional tagline "Stay Safe"
Audi separated their 4 customary linked rings with a tagline "Keep Distance".
Fluid Trademarks as a smart marketing blueprint
Fluid Trademarks have been adopted by brands as a marketing strategy as a means to depict the brand in different light, and to draw attention of customers towards the brand. As illustrated above, well-known brands often use fluid marks to expand the boundaries of the brand, thereby giving a new dimension to the brand and attracting more customers. Therefore, for an existing brand of immense repute, fluid trademarks can be used to educate masses in an occasional manner. For example, in the afore-mentioned examples, the marks were used to create awareness amongst the populace and at the same time help the brand build an image of being socially concerned. In furtherance, the dynamic nature of the brand can be highlighted that would help increase goodwill and reputation.
However, the usage of such a mark can also be detrimental to the brand as there is a transition from the original depiction of the brand. A brand that has not been in the market for long should avoid creating a fluid trademark as it would confuse the existing consumer base and may dilute the original trademark.
Fluid trademarks could pose a prospect of risk as there are not many legal authorities or precedents enforced towards their protection. In fact, at the prospect of a contention of litigation, these marks could pose to be vulnerable and would be considered for cancellation over non-usage. The risks involved are enlisted below-
Pertinent Challenges involved in the enforcement of Fluid Trademarks
The concept of trademarks primarily exists to denote the uniqueness of the brand and to protect the novelty of the brand. The first task in doing so would be to register the brand. When the notion of registration is expanded to include these fluid trademarks, there are not many laws in place to protect such marks.
For instance, Google has not registered a single Google Doodle as a trademark.
What can thus be inferred is that fluid trademarks has not seen its development as a legal notion yet. There are some prominent challenges involved in the legal enforcement of fluid trademarks that are vital to be looked into. A few of them are enlisted herein:
Confusion may arise amongst the consumers- With constant growth and launch of new brands, trademarks as a legal concept has constantly undergone evolvement. Proper branding becomes instrumental and can be the 'make or break' of the brand. If brand owners are not vigilant about the analytics of their consumer base and prepare them from beforehand, the consumers might not be able to resonate with the brand if a new variant of the existing trademark emerges in the market.
Cancellation of the trademark due to Non-use- If in a scenario, the fluid trademark is constantly in use as opposed to the original underlying trademark, it might possibly result in the non-usage of the original trademark that would lead to the cancellation of the original mark.
Resultant Unauthorised marks- Even amongst the international framework, there is no protection granted to the volatile nature of fluid trademarks. The absence of a standard legal bearing on fluid trademarks could lead to an increase in unauthorised variations by other parties.
Absence of legal protection- International frameworks and treaties such as Trade Related Aspects of Intellectual Property Rights (TRIPS) and the subsisting national legislations such as the Trade Marks Act, 1999 among many others, have no concept pertaining to fluid trademarks. In addition, the lack of judicial precedents also leads to minimal protection for such marks.
The core functionality of the underlying mark gets lost- Extensive variations to the mark would lead to the weakening of the underlying mark.
Therefore, before opting for releasing a fluid trademark, proper due diligence is required to be practised by brands for proper examination of the procedure involved. Brands consistently formulate new fluid trademarks owing to various occasions, as a measure of safety it would be advisable to file separate applications and document details for every fluid mark. Even if the fluid mark gets the vigour and push from the consumer base, it would be important for brands to use the underlying mark consistently to avoid cancellation and surrender of original mark due to non-usage.
In India, protection is granted even to unregistered marks. In due pursuance to this, on the account of a breach of a fluid mark, there are remedies available that could be implemented by these marks to enforce their rights and privileges.
For instance, in the case of Proctor and Gamble v. Joy Creators, the Court held that the mark doesn't need to be an exact replica of that of the registered mark to constitute trademark infringement. The court substantiated by adding that it would be a sufficient ground for infringement if the plaintiff is able to show that the trademark adopted by the defendant resembles the mark to a substantial degree, wherein the main features of the mark is extensively used.
Steps that can be undertaken to mitigate the potential risks involved
Risk management for these marks can be mitigated for these marks if a proper roadmap is chalked out. Some essential practises that brand owners may adopt to protect their underlying marks as well as the existing marks are enlisted herein-
Utilizing existing protections that are in subsistence- Since there are no legal impositions on fluid trademarks, the existing laws can be used to provide some form of protection and security to these marks. By using existing trademarks, one can seek protection for each fluid trademark being developed.
In India, there are provisions in relation to the registration of Series Marks under Section 15 and Associated Marks under Section 16 of the Trade Marks Act, 1999. However, the process of trademark registration in India is a very tedious process and spans to about 18-24 months. Therefore registering every fluid mark would not be an ideal mechanism to be opted for a campaign advertisement that would last for a few weeks.
However, if there is a violation of a fluid mark, parties can seek protection under the Indian Trademarks Act, 1999 and bring about a passing off action against a third party for unauthorised use of a fluid trademark.
Conduction of Trademark searches as a mode of mitigation- Brand owners may as a vigilance mechanism opt for periodic trademark searches to ensure that their trademark or gimmicky variations of the same is not under circulation in an unauthorised or unlawful manner.
Modification of the Terms of Use of a particular trademark- If the owner of an existing trademark licenses the usage of his trademark to a third party, then in such a scenario, apt changes are to be made to the terms and conditions, to protect their underlying interests.
Usage of an established mark- As an advisable method, it is generally suggested to use an underlying mark that is already established and has a strong consumer base such that even when the trademark is modified time and again, it doesn't create confusion among the customers. The general public should be able to relate to the variant form.
Prevailing usage of the underlying Trademark- When a fluid trademark is put to use, care must be taken to ensure that the original trademark is also in usage, along with the variations. This would ensure that the original trademark does not get weakened or diluted. Another method to ensure this is by ensuring the presence of the underlying mark with the fluid mark whenever a marketing campaign is carried on so that consumers are able to associate the variable fluid mark with the underlying mark.
Conclusion
In an era that is focussed on change and dynamism, it would be but unfair to not include Intellectual Property Rights in such a scenario. Trademarks becomes the motto of a brand with which a consumer identifies a brand. When a mark becomes so predominant over the years, it might become repetitive and redundant to the general public. Fluid Trademarks becomes a tool for brands to associate and engage with consumers to ensure that the brand survives the cut-throat competition in the market. Therefore, it is an excellent mode to keep the brands relevant in the market and keeping that in mind, these marks are not going to bridle off but will develop as a concept in the coming years. Introduction of laws to protect such marks are yet to unfurl and it would be fascinating to study the stances of the judiciary on the same.
Author: Haritha Dhinakaran, a student of Symbiosis Law School (Pune), currently doing internship at Khurana & Khurana, Advocates and IP Attorney, in case of any queries please contact/write back to us via email chhavi@khuranaandkhurana.com.
No comments:
Post a Comment