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TRADEMARKS: The fluidity of trademarks - not only humans are social distancing.

14/05/2020

Introduction

 

Only a few weeks ago, the phrase "social distancing" was not at all part of our daily conversation. In the context of the current health crisis, however, it is on everyone's lips. It is now one of the well-known measures we are obliged to obey to limit the spread of the coronavirus (Covid-19).

 

As countries are in lockdowns, businesses in many cities have been forced to close as well. In order to stay relevant in these strange times, a number of brands as temporarily adapted or modified their trademarks and logos to reinforce the importance of complying with the health guidelines.

 

Hereunder are some examples of major companies’ revamped logos:

Credits: Volkswagen, McDonald's, Proximus and Bpost

The German automaker Volkswagen posted a short video on Youtube promoting social distancing. In the video, Volkswagen’s characteristic stacked VW logo was revamped to feature a gap between the two prominent letters.

 

On its Brazilian Facebook page, the fast-food giant McDonalds posted an amended logo in which the iconic golden “M” is split into two golden arches with a slight space between them.

 

This trend of “social distancing redesign” has been picked up by Belgian companies as well. On social networks, Proximus is displaying its trademarks with spaced-out letters.

 

The same goes for Bpost, which also displays its brand with larger space between its letters. In addition, the two geometric shapes that form the company's characteristic logo are now respecting a more reasonable safety distance.

 

Although the changes are subtle, they work precisely because of the instant recognition these trademarks enjoy. The public knows exactly what has been changed. The message passes straightaway.

 

From a marketing point of view, these redesigns are relatively common. They grab the public's attention and maintain a fresh and innovative brand identity. This strategy is also known as "fluid marks" or "mutating marks".

 

A number of considerations come into play for any trademark owner thinking about temporarily altering their logo, whether this is in the name of promoting social and physical distancing, or for some other reason.

 

What is a fluid trademark?

 

Fluid marks involve the creation and use of a variety of different, frequently changing variations of a particular trademark, which variations coexist alongside the original mark. These variations typically retain certain features of the underlying mark, but include new design elements[1].

 

A typical example of a company that has resolutely taken the path of fluid trademarks is the Internet search engine Google. The company has registrations (in the form of word marks and figurative marks) for its original trademark, which is characterized by the familiar font and four colors. However, Google regularly offers variations according to the festivities or historical events of a particular day. Google refers to these variations as “Google Doodles.”

 

For instance, users who visited the Google website on April 6, 2020, noticed that the usual letter E had been replaced by a scientific researcher presenting the importance of social distancing to “flatten the curve” of Covid-19 infections.

 

Credit: Google

 

Using fluid marks, like any change in use of a trademark, is not completely without risk. In the following paragraphs, we will explore some of them.

 

Trademark variations, a genuine use of an existing registered right?

 

A trademark registration is a powerful tool that can potentially go on forever. The disadvantage of acquiring rights on a trademark is that its owner or authorized third party (e.g. a licensee) is obliged to use it. Indeed, it is not permitted to occupy trademarks defensively.

 

In many countries, a registered trademark will become vulnerable to cancellation if it is not put to genuine use for a continuous period of usually 3 or 5 years. In the EU, the relevant period is 5 years.

 

However, the alterations made to a registered trademark need to be minimal in order for the modified logo to still constitute genuine use of trademark as registered. The decision whether a change is minimal or not lies with the court. As a consequence, a trademark owner can never be  certain that the court decide in his favor. As a result, if the adapted mark is used for an extended period of time, there is the risk that the original registration may become vulnerable to cancellation for non-use.

 

This problem does not exist as long as the brand owner continues to use the original mark in addition to the variations of the mark. In such a case, the owner complies with the legal obligation of use so that he will not be obliged to proof that the use of the variant covers use of its registered trademark.

 

In the context of the current health crisis, any mark adapted to reinforce the message about the importance of social distancing is likely to be used for only a relatively short period of time and is unlikely to fully replace the existing mark on all products and packaging. Even if the logo is altered for a few months until the measures on social distancing are relaxed, this is only a short part of the 5 year period that is taken into account when assessing genuine use. As such, trade mark owners who will revert to using their registered trade mark within a few months should not be concerned.

 

Is it necessary to conduct a new availability search?

 

In theory, before altering their logo, the brand owners should consider whether use of the new styled mark could infringe the rights of others. It is prudent to conduct trademark availability searches to ascertain that there are no serious obstacles to use (and registration) of the altered mark.

 

In practice, brand owners adapting a mark as a reaction to COVID-19 will most likely add spacing to their registered logo. For that reason, in most cases, the risk of infringement of the rights of third party is limited. Further, the use of the modified mark will be fairly short-lived and the brand owner will presumably revert back to their usual mark as soon as things get back to normal.

 

Should brand owners register the variations of the underlying mark?

 

Some brand owners could be concerned about an unscrupulous third-party trying to copy the newly styled mark and exploit it for their own commercial gain. The most diligent strategy would likely be to file separate trademark applications for each of the variations.

 

However, there are practical and financial reasons why registration of the variants of a trademark may not be an effective way to protect a fluid ‘social distancing’ trademark.

 

The registration process is lengthy, and a particular “covid-related” variant on a fluid trademark will be used by the brand owner for (hopefully) a short duration. There seems to be limited benefit, as the application may not even have been examined by the time the worst of the pandemic has passed. Moreover, amassing a large portfolio of individual registrations could become costly in light of registration fees and legal fees relating to the application process.

 

Furthermore, since the altered or temporary mark is unlikely to be put to genuine use after registration, the ability to enforce the registration will also be time-limited, as the right will become vulnerable to non-use cancellation.

 

Guidelines for brand owners using a fluid trademark

 

In the light of the foregoing and  before engaging in such a commercial strategy, brand owners should consider the following good practices:

 

-        Strong mark. To minimize the risk of consumer confusion, the owner should ensure that the underlying mark is strong. The relevant public should instantly recognize what has changed from the original mark.

 

-        Continued use. Brand owners should 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 signature colors or stylized font. It will help to avoid the weakening of the original mark.

 

-        Availability. Brand owners should consider conducting availability searches before using a new variation of an original mark. It is prudent to conduct a trademark search to ensure that the new variation will not infringe another party’s trademark rights.

 

-        Registration. If their resources permit , brand owners should consider whether it makes sense to register particular variations of the underlying mark to maximize protection of the fluid mark.

 

In conclusion, when making any alternations to your trademark(s), it is advisable to seek the specific opinion from an attorney before proceeding.

François Willems - Intellectual Property Attorney


 

[1] P. Viscounty, J. Barry and D. Hazlehurst, “Fluid Trademarks: All Fun, or Some Risk?”, Intellectual Property Today, Chicago, February, 2014, p. 26.

 

 

 

 

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