François Willems June 8 2020 Trademark fluidity – not only humans are social distancing GEVERS | Intellectual Property - International François Willems Intellectual Property IntroductionWhat are fluid trademarks?Trademark variations: genuine use of existing registered right?Is it necessary to conduct new availability searches?Should brand owners register variations of underlying mark?Guidelines for brand owners using fluid trademarksIntroductionOnly a few weeks ago, the phrase 'social distancing' was not part of daily conversations. However, in the context of the current COVID-19 crisis, it is on everyone's lips and is now one of the most well-known measures introduced to limit the spread of COVID-19.As countries are in lockdown, businesses in many cities have been forced to close. In order to stay relevant in these strange times, a number of brands have temporarily adapted or modified their trademarks and logos to reinforce the importance of complying with the health guidelines.Figure 1 shows some examples of major companies' revamped logos: Figure 1(1)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 letters.On its Brazilian Facebook page, 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 also been picked up by Belgian companies. On social networks, Proximus is displaying its trademarks with spaced-out letters.The same goes for Bpost, which also displays its brand with larger spaces between the 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 that these trademarks enjoy. The public knows exactly what has been changed and they understand the message 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 trademark owners thinking about temporarily altering their logo, whether this is in the name of promoting social and physical distancing or for some other reason.What are fluid trademarks?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.(2)A typical example of a company that has resolutely taken the path of fluid trademarks is internet search engine Google. The company has registrations (in the form of word and figurative marks) for its original trademark, which is characterised by the familiar font and four colours. 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, on 6 April 2020 Google replaced its usual letter E with a scientific researcher presenting the importance of social distancing to 'flatten the curve' of COVID-19 infections (Figure 2).Figure 2(3)Using fluid marks, like any change in use of a trademark, is not completely without risk.Trademark variations: genuine use of existing registered right?A trademark registration is a powerful tool that can potentially exist forever. The disadvantage of acquiring rights on a trademark is that its owner or authorised third party (eg, a licensee) must use it. Indeed, trademarks cannot be occupied 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 three to five years. In the European Union, the relevant period is five years.However, the alterations made to a registered trademark must be minimal in order for the modified logo to still constitute genuine use of the trademark as registered. The decision whether a change is minimal or not lies with the courts. Consequently, a trademark owner can never be certain that the court will decide in their favour. As a result, if the adapted mark is used for an extended period, there is a 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 they need not prove that the use of the variant covers use of its registered trademark.In the context of the COVID-19 crisis, any mark adapted to reinforce the social distancing message is likely to be used for only a relatively short period 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 social distancing measures are relaxed, this is only a short part of the five-year period that is taken into account when assessing genuine use. As such, trademark owners which will revert to using their registered trade mark within a few months should not be concerned.Is it necessary to conduct new availability searches?In theory, before altering their logo 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 parties is limited. Further, the use of the modified mark will be fairly short-lived and the brand owner will presumably revert to their usual mark as soon as things get back to normal.Should brand owners register variations of 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 be an ineffective way to protect a fluid social distancing trademark.The registration process is lengthy and a particular COVID-19-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 that 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.Further, 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 fluid trademarksIn the light of the above and before engaging in such a commercial strategy, brand owners should consider the following good practices:Strong mark – to minimise the risk of consumer confusion, owners should ensure that the underlying mark is strong. The relevant public should instantly recognise 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 (eg, signature colours or stylised font). This 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 maximise protection of the fluid mark.In conclusion, when making any alternations to trademarks, owners should seek an attorney's opinion before proceeding.For further information on this topic please contact François Willems at GEVERS by telephone (+32 2 715 3711) or email ([email protected]). The GEVERS website can be accessed at www.gevers.eu.Endnotes(1) Credits: Volkswagen, McDonald's, Proximus and Bpost.(2) P Viscounty, J Barry and D Hazlehurst, "Fluid Trademarks: All Fun, or Some Risk?", Intellectual Property Today, Chicago, February 2014, p 26.(3) Credit: Google.