Date: 12th January, 2021
by Shwas Bajaj, UILS, Panjab University
Typically, a trademark is conceived to be a static, two-dimensional term or a design, which is used to uniquely identify certain goods or services. However, as the digital times have evolved, all the companies are striving hard for making their trademark such that they strike the eyes of the consumer and are memorable. One of such non-conventional trademarks is fluid trademarks.
As the name suggests, fluid trademarks, while maintaining a source identifying feature, constantly keep changing. They involve using and constantly creating new variations of the same basic trademark. Such variations are present simultaneously with the original mark by way of keeping the original mark and introducing in the elements of the new design. They reflect a new, modern approach to branding that has found great success in the Internet age.
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.
REGISTRATION OF FLUID MARKS
Under Section 15 of the Indian Trade Marks Act, , a provision for registration of a series of trademarks is available. The explanation of the concept enshrined in Section 15 has been done by the draft Manual of Trademarks 2015 in the way 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. The use and working of a provision like Section 15 is possible only when the anticipation can be made as to what all variants will be made use of for the purpose of representing the trademark.
JUDICIAL APPROACH TOWARDS FLUID TRADEMARKS
Fluid marks are a fairly recent development in the Indian market and have not yet been tested in courts. It would not be an easy task for right holders to challenge third-party infringements, when the mark is subject to continuous alterations and no consistent use of variants of the mark has been established. However, India provides common law protection to fluid marks.
In the case of Proctor and Gamble v. Joy Creators, it was ruled by the Delhi High Court that in order to constitute a trademark violation, it is not essential that a mark must be an exact replica of the registered trademark. The Court stated, “It will be sufficient if the plaintiff is able to show that the trademark adopted by the Defendant resembles its trademark in a substantial degree, on account of extensive use of the main features found in [a] trademark.”
In the case of Reebok India Company v Gomzi Active (ILR 2006 KAR 3961, 2007 (34) PTC 164 Karn) it was held by the Karnataka High Court that it must be established by a person who claims the benefit of distinctive usage that secondary meaning and goodwill has been developed by the slogan. The issue before the Hon’ble Court was whether the slogan “I am what I am” had acquired a distinctive character because of use by Gomzi. The Court accepted the contention of Reebok that, due to the fact that the slogan was a generic phrase, it had not acquired a distinctive character with respect to Gomzi’s goods. By way of setting aside the temporary injunction issued by the trial court, the High Court made the observation that no conclusive evidence was present to make inference that a probability of confusion among consumers, because of the reason that the registered trademarks of the two parties were completely different and mere use of the common words ‘I am what I am’ would not result in misleading the consumers.
CHALLENGES IN USING FLUID MARKS
Third-party variations: Since the fluid marks have an interactive nature, the consumers may create their own distinct alterations of the original mark. As a result, one can witness the rapid creation of new variations. The brand owners would be faced with the tough task of preventing these kinds of third-party variations, because of the fact that it may prove detrimental to their reputation if they enforce their rights against consumers and fans.
Confusion among consumers: Random variations of a mark may result in consumer confusion. All efforts to create an association between consumers and the brand are futile and useless if the consumers are unable to identify the original mark.
Weakened original mark: The above two factors could result in the risk of the underlying mark being weakened or diluted.
Abandonment of underlying mark: If the rights holder indulges itself too much in the creation of new variations of fluid marks in such a manner that excludes making the use of the underlying mark, then it could also lead to the original mark being deemed to have been abandoned.
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. As the time progresses, it would be interesting to witness how Indian courts interpret the principles of trademark law in cases involving fluid trademark.