Companies are increasingly turning to fluid trade marks to bring together the whims of social marketing with traditional branding.

Static advertising is no more. In today's whimsical consumer society, consumers increasingly demand control over the messages we receive. We can "opt out" of receiving advertising, adapt social media pages to reflect personality, and submit our creative ideas to companies for their branding images.

Why not engage with this consumer drive in the trade mark and branding industry?

Trade marks are traditionally static words, slogans, images, colours etc. A trade mark registration gains you a monopoly on the mark as registered. Ten years ago, trade mark experts would have said the best way to protect your assets was to use your trade marks exactly as registered. If you changed your logo design, you needed to obtain a new registration.

How can we bring together the whims of social marketing with traditional branding?

Companies are increasingly turning to fluid trade marks to answer this question. Using fluid trade marks gives the impression of a vibrant and innovative company. Google does this well through their use of the Google Doodle trade mark, which changes almost daily and therefore engages users with the "now". Not to mention the flourishing side-industry in Google Doodle paraphernalia that Google enjoys. By maintaining a distinctive underlying brand, companies such as Google can sustain frequent adaptation to the appearance of trade marks.

Closer to home, one of New Zealand's most distinctive trade marks is the Tui "Yeah right" brand. DB Breweries successfully adapts their marketing on a regular basis, while maintaining a recognisable underlying brand. The design of their advertisements and phrase "Yeah right" are immediately recognisable to the average New Zealand consumer.

Actively engaging consumers with marketing strengthens the connection between company and consumer, a method DB Breweries and Google both use. You could submit a phrase to DB Breweries, or a doodle to Google, and see your creation appear in their marketing. The resulting connection between consumers and brand creates a strong emotional attachment.

What are the main risks involved with a fluid trade mark strategy?

This strategy is not without risks. To the traditional approach, allowing consumers to dictate branding, or consistently change the look and feel of your brand, is to invite trouble. Trouble can arise because:

  • it is not clear in New Zealand whether you can enforce rights to a trade mark registration if you have only used the mark in a fluid form
  • a registered trade mark that has not been used as registered for a continuous period of three or more years becomes vulnerable to removal for non-use
  • if your underlying brand is not well-known, then using a fluid trade mark strategy could dilute it beyond recognition.

How can you manage these risks while maintaining an innovative edge?

Make sure your underlying trade mark is distinctive and capable of maintaining its distinctiveness through any changes you make. This is a much higher level of distinctiveness than is required for registration, and generally requires a well-known underlying mark. You should also maintain a consistent approach and implement rules around what you can and can't change. Don't wing it. The Google Doodle and TUI are instantly recognisable underlying brands as both have been used extensively. If your underlying brand is not well-known, you run the risk of consumers not recognising your trade mark as you change it.

One strategy is to protect each new variant of your underlying brand by obtaining trade mark registrations. This is not always financially or logistically possible, but it should be considered. Just keep in mind that if you do not use a variant, it will become vulnerable to non-use. If each variant is transitory, it may not be worth spending the time and money on protection. Searching each variant before using it - to make sure you don't infringe - is also an issue. Again, if the use is transitory, the risk may be so low as to not warrant a search.

Most importantly, make sure you continue to use the basic trade mark, as it is registered. An unstylised word mark protects all stylisations of the word. So best practice is still to obtain a registration for the word mark, and make sure you continue to use the underlying trade mark.

An edited version of this column appeared in NZ Marketing magazine, Sep/Oct 2013.