The approach towards any company’s logo/mark has experienced a shift with the advent of digitization. Big corporations are now constantly modifying their logo to highlight any recent happening, or make the page more interactive. For instance, Google Doodle is known for its interactive designs, which are modified per any major event or landmark day. Although the original/basic logo of Google is protected under the trademark law, the company is not constantly filing for protection of the modified ones, which are displayed on the Google Doodle. This leverage is accorded, by the concept of fluid trademarks. Fluid trademarks involve the creation of a different set of marks, which are made after modifying the original/registered mark. The modified ones retain the basic features of the prior registered (original) mark so that they won’t lose out on the commercial identity associated with the brand itself.
Source theory: An Important Principle in IP Jurisprudence
Because there is a paucity of disputes in the area of fluid trademarks, it is imperative to talk about one of the most mentioned theories to support the concept. As per the source theory, the main intent behind getting a trademark registered is enabling the consumers to uniquely identify the particular brand (among various other options in the market). The concept of trademark fluidity is supported by this theory since the courts of European and US courts have held now and again that a mark is more about the source distinguishing ability, rather than its color, shape, or any other feature. This stance was strengthened by the introduction of Morehouse defense, that applies when an applicant owns a prior registration “for essentially the same (or substantially similar) mark and goods or services, and for which registration has not been challenged”. The terms used here including prior registration and similarity in marks are what form the base for bringing the concept of trademark fluidity in the mainstream discussion.
The Case of Louis Vuitton Malletier
Since the concept of trademark fluidity allows the users to have the liberty to a certain extent of modifying the registered mark, it also creates a debate on the extent of protection given to these variants. Though conventional IP laws provide for protection to the registered mark, it became important to see how will the courts decide the same for variants. It was the case of Louis Vuitton Malletier v. Dooney & Burke, Inc. which brought the concept of trademark fluidity (variation in the registered mark) in the limelight. Here, the design by Dooney & Burke was said to be infringing the secondary monogram which was used by Louis Vuitton (although it wasn’t registered). The case went to the Second Circuit court, where the court focused on the comprehensive set of standards to determine whether the similarity between the two marks would create scope for confusion among the general customers for the two brands. After considering this, the court relied on two points while accepting the mark of Louis Vuitton, which were:
- The original/registered mark shall have a continuing commercial identity, which means that any general consumer can easily recognize the brand by the original mark.
- The unregistered mark has to be distinctively different from the allegedly similar one and shall have a secondary meaning of its own (its own commercial identity about the original one).
Although the Indian laws (including the trademark laws and copyright act) don’t talk about the concept of fluid trademarks explicitly, Indian courts have decided in favor of protecting the series of marks, in the case of Proctor and Gamble vs Joy Creators. Here, the High Court of Delhi held that the defendant will be able to secure protection for the series of marks if he can show that there existed a substantial amount of similarity with the original or registered mark, if not exactly similar.
Although the regulations today don’t explicitly address fluid trademarks, the applicable law can be traced from various judicial precedents, as well as the theories of IP jurisprudence. Trademark fluidity is nothing but an extended application of a registered mark, protection of which stems out from common sense. The aspect of fluidity becomes much simpler when we focus on the commercial identity of the mark and its relation with the prior registered mark. However, it has to be noted that the extent of deviance shall not be too much, that the source becomes unidentifiable. Also, the companies shall make sure that the original/registered mark shall be used simultaneously so that the commercial identity is retained. With time, it will be interesting to see how will the legislations incorporate this practice, considering that there has been a spike in the use of variant marks mostly after COVID-19 across the globe.
Author: Unnat Akhouri, Legal Intern at PA Legal.
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