India: Fluid Marks: The Emerging Non-Conventional Trademark And Its Justification Under Trademark Theories

Introduction

In COVID 19 pandemic, one could experience that numerous companies have been using designed versions of their original underlying trademarks to promote their products while spreading awareness about COVID 19. For instance, masks on "AMUL" girl & "STARBUCKS" mermaid promote the use of masks. Splits in yellow 'M' of "McDonald's", Space between the "AUDI" rings, letters of "COCACOLA", and V & W of "VOLKSWAGEN" spread awareness about social distancing. Similarly, disconnected bridge of "HYUNDAI" logo promotes demise of handshake and use of elbow bump.These designed versions of original trademarks are popularly known as 'Fluid marks', which are the emerging non-conventional trademarks. This Article analyzes the 'Fluid marks'and how well trademark justification theories hold them.

Fluid marks

'Fluid marks' are expansion of an original underlying mark. It incorporates continuously changing variations of the original mark i.e. an amalgamation of creative design elements and substantive characteristics of the underlying mark. Variation is not permanent, but for time being. Variant marks are designed in a manner that they correspond to underlying marks and identifies the same source that of underlying marks.

Illustration-Search engine "Google" has been using "Google Doodle" keeping their word mark "Google" constant with variance in designs considering the special occasion.

Illustration-'Fluid marks' can also vary in word while keeping trade dress/design constant. The beverage company "Perrier" has kept his trade dress constant, but replaced "Perrier" with word of similar length end with "ier" i.e. "luckier", "sexier", "sassier", "crazier," "scarier", "prettier", "flirtier" and "riskier".

Fluid marks is Conventional or Non-Conventional Marks

'Fluid marks' diverge from conventional trademarks because they frequently change, whereas later are static with which consumers get familiar and recognized them easily. Judiciary has recognized protection to trademark's variants. However, neither any statute recognizes registration of all the 'Fluid marks'in one application, nor any statute recognizes upgrading of underlying trademark into 'Fluid marks'to incorporate unprecedented matters like of COVID-19. Unlike other non-conventional trademarks, 'Fluid marks' don't face any problem in registration as 'Fluid marks' can be graphically presented. However, brand doesn't prioritize registration of 'Fluid marks' as it is only for time being and registration through separate application would take time. Further, varying fluid marks might cause confusion and weaken/abandon the underlying mark. Therefore, fluid marks get protection generally through action of passing off and considered as non-conventional marks.

Trademark Theories & Fluid Marks

As the IP jurisprudence has not witness abundant disputes on the subject, we need to analyze whether the theories for justification of trademark protection hold the 'Fluid marks'.

Source Identification Theory

This theory advocates the primary function of trademark i.e.to trace the owner or indicate the origin of goods through the distinctiveness of marks. This theory holds 'Fluid marks' well. 'Fluid marks' incorporates variant of original marks, which are designed in manners that they correspond to underlying marks and identifies the same source. However, source theory would hold fluid marks of large companies comparatively more tightly than small companies. The US Supreme court held that, plethora of materials can be protected as trademarks, and it is the source distinguishing ability rather than oncological status of color, shape, word that protect them as trademarks. The European Court also held that, proprietor can use different forms of mark than the registered trademark, if such variant marks did not alter the distinctive character of the registered mark. However, the distinctive characters of underlying mark in fluid marks grant them protection, but non-distinctive character in them allow infringe to pass them off and their protection depend upon likelihood of consumer's confusion, otherwise it would penalize the honest user also.

Quality Assurance Theory

This theory advocates uniform quality assurance by the mark holder in consideration of additional charge. This theory also holds 'Fluid marks' well. Brand in their variant marks doesn't alter the distinctive character of their marks, so that consumers can relate themselves with it and quality assurance by brand persists despite the variance. Further, fluid marks mostly use by large companies possessing well-known marks whose qualities have been trusted by consumers over a period of time.

Search Cost Theory

This theory is an extension of source theory and advocates trademark's monopoly in consideration of reduced search cost of consumers to opt a product by associating perpetual image with product's source. This theory doesn't hold fluid mark well. Fluid marks tilts the see-saw toward brands and disturbs the balance maintain by the theory, because brands get expanded protection and distort market force in their favor, whereas consumers incur extra search cost due to confusion created by trademark variance.

Conclusion

'Fluid marks' is well planned branding strategy that advertises the products and increases their intrinsic value. Therefore, protection should be granted to such marks. Delhi high court in Proctor and Gamble v. Joy Creators, observed that, "It is not necessary that in order to constitute infringement, the impugned trademark should be an absolute replica of the registered trademark of the plaintiff. 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 his trademark". However, no Indian case has been dealt exclusively on the subject yet. These marks are here to stay and more laws would be unfurled in upcoming days regarding grant of protection to such marks. It would be interesting to see how Indian Judiciary will approach it.

This article was written by Sahil Kumar Purvey - a student pursuing B.A. LL.B. at Hidayatullah National Law University, Raipur, intern at Khurana & Khurana, Advocates and IP Attorneys