Protection for fluid trademarks in India

Protection for fluid trademarks in India

In order to keep up with a changing world, some companies have used branding and advertising of fluid trademarks (i.e., logos), trade dress in particular. Brand owners have done this during covid-19, trying to pave a way to be creative by embracing consumer engagement through dynamic, attention-grabbing tweaks, and regularly changing source identification.

Fluid trademarks are marks that involve creation and use of a variety of different, frequently changing variations of a particular trademark, where the variations co-exist alongside the original mark. These variations typically retain certain features of the underlying mark, but include new design elements. Although the changes are quite subtle, they are easily distinguishable and recognized by an average consumer because of their worldwide reach, reputation and goodwill, thereby maintaining a fresh and innovative brand identity and association with the public at large.

Some notable examples include: A Google doodle that consisted of an interactive Pac-Man game that featured the letters of the word “Google” in the game maze; McDonald’s Brazil on its Facebook page amended its logo in which the iconic golden “M” was split into two golden arches to signify social distancing; German automaker Volkswagen posted a short video on YouTube promoting social distancing; and Subway India attached a face mask to its logo.

Registration in India

A trademark registration is a powerful tool that can potentially go on forever. The Indian Trade Marks Act does not provide protection to fluid trademarks, however, one can certainly refer to an already existing provision pertaining to series marks under section 15 of the draft Manual of Trademarks, 2015, which refers to a “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 matter of a non-distinctive character, which does not substantially affect the identity of the trademark”.

However, the downside still remains that one cannot go ahead and register the mark, as section 15 categorically states that one cannot update a trademark application to be converted into a series trademark after the registration of a single trademark has taken place.

It is pertinent to note here that while the concept of fluid trademarks remains unclear in India, brand owners can still adopt a mark in reaction to the current pandemic and continue to use the modified mark, as it will be fairly short-lived, thus returning to its usual original mark once the calamity subsides.

Even if the logo is amended for a few months until the time guidelines are relaxed, owners who will revert to using their registered trademark within a few months should not be concerned. Indian courts are yet to hear a matter involving fluid trademarks, and thus, it will be interesting to see how the jurisprudence surrounding this conundrum evolves over the next years.

Checklist for brand owners

Strong mark. To avoid confusion among consumers, adopt a fairly strong mark so that the public easily recognizes and associates the mark with the applicant alone.

Availability. Consider conducting an availability search before using a new variation of an original mark, in order to ensure that it does not infringe on any third party’s trademark rights.

Uninterrupted use. Continue to use the underlying mark in its original form when adopting a fluid mark. As a result, the original mark will not be vulnerable to cancellation for non-use. Further, each variation comprising a fluid trademark should maintain the source identifying characteristics of the underlying mark, such as colour combination or stylized font.

Terms of use. Consider drafting terms of use that cover “rules for proper usage” for the mark on your website or manual, so as to permit use of the mark in a certain way that is subject to certain requirements. For example, Google highlights its “Do’s and Don’ts” as part of its brand resource centre available on its website.

Yashvardhan Rana
Intellectual Property Lawyer
New Delhi