Member Article

There was an interesting article in a publication called TBO (Trademarks and Brands Online) entitled Fluid Trademarks: Keeping Them Watertight. As the title suggests, it deals with fluid trade marks. But what exactly are they? ‘Fluid trade marks’ isn’t some obscure way of describing trade marks that are used for beverages. The term rather refers to trade marks that vary in use. 

The article says that ‘fluid trademarks are those presented in an unconventional way...an old logo may be recast in different colours, given some movement or merged with different images to make it more suited to the digital world.’ The article says that they are used very effectively by various companies: the owners of the vodka brand Absolut, whose distinctive bottle is used as a canvas for various different designs; the UK TV broadcaster Channel 4, whose ‘4’ logo is deconstructed on screen in a host of different ways. But the best known example is undoubtedly the Google logo. Because, as everyone who has a computer knows, the Google logo appears in many different guises, a phenomenon which has become known as the ‘Google doodle’. 

 

The article suggests that the practice of varying trade marks flies in the face of conventional branding practice, where consistency is everything. It suggests that only well established and confident brands can pull this off: ‘Once a brand has established itself in the world and is sufficiently recognisable, it can afford to push the trademark’s boundaries and play with it in different ways.’ The article does acknowledge that the practice holds certain advantages, in the sense that it suggests that the brand is dynamic and contemporary, and it keeps consumers guessing and interested: ‘They allow brands to evolve and stay relevant.’

So what intellectual property (IP) issues arise? The article suggests that if you are adopting new imagery in your trade mark you must, of course, ensure that you have rights to that imagery, even if your usage will only be short-term. The imagery could, of course, be protected by copyright, or by way of trade mark or design registrations. So if you’re not creating the new imagery yourself (or having it created for you), you’d be well advised to establish who owns the rights, and ensure that you get a licence. This is pretty basic stuff, of course, and it applies as much to variants as it does to the original trade mark.

What about trade mark registrations? Presumably you’ll have registrations for the original trade mark, but do you need to register all the variants separately? It’s hard to say, and much will depend on how often you make changes, and for how long you use the variants. As anyone who has ever registered a trade mark knows, the process can be slow and in cases where worldwide protection is required, very expensive. So the answer is as follows: ideally you should register every variant, but in many cases it may simply not be practical.

So what happens if you don’t register a variant and that variant is copied? Will you have any right to sue? Much will depend on how close the variant is to the original trade mark that’s registered. If it’s relatively similar, the copy of the variant will probably amount to an infringement of the registered trade mark. Which, of course, suggests that it’s important to make sure that your variants don’t stray too far from the original and that there are certain basic features that are present in all the trade marks. 

Even if you don’t have a trade mark infringement claim, you may still be able to sue for passing off if you can show a reputation in the variant of your trade mark and a likelihood of confusion. You may even have a case of copyright infringement, but it’s worth remembering that, as copyright is an unregistered right, it’s harder to prove that you have copyright. Also bear in mind that with copyright you need to prove that there has been actual copying, not simply that there is a similarity.

It’s also useful to know that in some countries like the UK you can register a series of similar trade marks in one registration (a so-called ‘series mark'). In practice this will, however, only be relevant if you know what variants you will be using when you apply to register your original trade mark.

Another issue that comes up is this: can your trade mark registration be cancelled for five years non-use if you don’t use the main trade mark over that period, but only use unregistered variants? Once again it depends on how close the variants are to the original. The law says that the use of a trade mark with additions or alterations that don’t substantially affect its identity may be OK. This reinforces the thinking that variations must be kept to a minimum.

So before you venture into the area of fluid branding, do consider the legal issues, and do get advice. Before closing, I’d like to mention something that may be confused with the fluid trade mark but is in fact something quite different – the moving or non-static trade mark. This is still quite rare but it has been with us for quite some time – Sasol was using a ‘molecules’ moving trade mark years ago. Obviously a trade mark can only move in certain environments such as online and TV advertising, but a ‘still’ can be used on paper and on packaging.

A moving trade mark can be registered despite the fact that trade mark registers are static. You can represent it graphically by using a series of pictures showing the various positions of the moving object, perhaps with a written explanation – the company British Telecom once protected a rotating globe logo by way of a registration that consisted of all 286 images of the sequence, together with a lengthy explanation of what the trade mark was.

As branding evolves, so does trade mark law and practice!

 

Footnotes: For more information, please contact: Ilse du Plessis Director Intellectual Property +27 82 411 7547 [email protected]