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We’re pleased to bring to you a guest post by Devangini Rai discussing the application of Indian trademark law to fluid trademarks, which are popularly being used in the context of the ongoing Covid-19 pandemic. Devangini is a 5th Year student at University School of Law and Legal Studies, Guru Gobind Singh Indraprastha University, New Delhi. Her previous guest post on the blog can be viewed here.
Fluid Trademarks: An Alter Ego for Brands?
Devangini Rai
As has typically been the case, Covid-19 has led to new revelations about all aspects of life and exposed the ways in which the world is coping against it. Covid-19 has particularly affected all sorts of commercial ventures in the market. As a pandemic, it has spared no industry and no enterprise. In such unprecedented times, it has certainly led to a sea change of how entities present themselves as fighting and raising awareness against the ills of the disease. A uniquely interesting aspect of branding and advertising in this regard is the emergence of fluid trademarks.
Fluid trademarks refer to a method of capturing various versions of a particular trademark which may not be very dissimilar to each other. They should be designed in such a way that various versions of a trademark should identify with the same source. There are many ways in which fluid trademarks can be used to build an image and gain popularity for a brand. A famous Indian example of a fluid trademark is the iconic Amul Girl, who is used regularly in cartoons to promote the brand in form of a visual commentary on the ongoing political and social issues. Similarly, Google as a worldwide known internet giant frequently changes their homepage by using a Google Doodle to commemorate important events. In recent times, there has been a spurt in usage of fluid trademarks in the ongoing Covid-19 era where a number of highly identifiable brands tweaked their logos. McDonalds had their iconic yellow ‘M’ in the red-background re-designed, the wheels in the four wheel logo of Audi were spaced farther apart, BMW saw its logo spaced with a message saying ‘thanks for keeping distance’, the Starbucks mermaid has a mask over her face, Nike’s swoosh says ‘Just Don’t do it’ and the list goes on. As creative as firms may try to be in redesigning themselves, as a response to the global sentiment for Covid-19, there may be some roadblocks for the IP protection that the brands require for their new logos.
Registration of Fluid Marks
Trademarks are a sign of continuity and perpetuity of a brand. They are advertised in a manner to gain mass public recognition. Under the Indian Trade Marks Act, under Section 15, a provision for registration of a series of trademarks is available. The concept as explained behind Section 15 by the draft Manual of Trademarks 2015 is that a “person claiming to be the proprietor of several trademarks in respect of the same goods or services which, while substantially resembling with each other in the material particulars thereof, yet differ in respect of matter of a non-distinctive character which does not substantially affect the identity of the trademark…”. While this may to a large extent explain the concept of fluid trademarks, the dynamic nature of a fluid mark does not make it the first priority of brand owners to seek a registration for it. A provision like Section 15 only works when it can be anticipated what all variants will be used for representing the trademark. A pandemic as severe as Covid-19 could have obviously not been anticipated before. With time, companies try to keep themselves relevant and retain their mass appeal. To respond to changes that affect globally, fluid trademarks are an excellent way to stay in vogue. Section 15 does not allow updating a trademark application to be converted into a series trademark after the registration of a single trademark has taken place. As the name ‘fluid’ suggests, Section 15 so far does not account for the dynamic nature that such trademarks possess. Thus, it is difficult to be satisfied that the current Indian position on series trademarks sufficiently accounts for fluid trademarks.
Standard of Distinctiveness (or Non-Distinctiveness)
A case of infringement of a fluid trademark has not yet been seen in Indian courts. The wide gamut of non-distinctiveness that fluid trademarks give may lead to certain complications. As described in this insightful article by Latham and Watkins, there can be a case where an infringer has copied a trademark which may not resemble any of the fluid versions of the original trademark but still be a potential case of passing off (considering most likely that the fluid versions are not registered). In such a case, what accounts as a non-distinctive feature in a fluid trademark that would have been purported to copy can become a lacunae to identify. In the case of Louis Vuitton Malletier v. Dooney & Burke, Inc., the plaintiff alleged that the defendant had copied a stylized version of their toile monogram (the LV initials) onto their products. The plaintiff had stylized their original trademark into a multicolour version over a white background. The Court observed the lack of likelihood of consumer confusion by “focusing on the similarity of the marks sequentially in the context of the marketplace rather than in a side-by-side comparison”. It ultimately remanded the case to the lower court with regards to the determination of likelihood of confusion between the two marks.
Thus, an observation which arises is that while fluid trademarks may give substantial freedom and scope to be creative around trademarks, the right of monopolizing on certain non-distinctive features may not be always proven under law. The question of likelihood leading to confusion needs a strict discharge of proof. It would be interesting to witness how Indian courts interpret the principles of trademark law in cases involving fluid trademark as time progresses.
Fluid trademarks are here to stay. They will be always seen as questioning the perpetual nature of a trademark. However, the maximum use of fluid trademarks can only be done by well-established brands which can afford to make a statement with their trademarks and not run a looming infringement risk.