Rights holders are advised to take precautionary measures in order to avoid problems and issues related to the use of fluid marks
In many highly competitive commercial fields there is a need to attract consumers’ attention through various forms of advertising that incorporate variations of registered trademarks. However, this practice stands in contrast to the general principle of trademark law – that of static use.
Once a trademark application has been filed with the respective trademark office, the trademark may no longer be altered. The rights holder must use the trademark in its registered form. However, faced with an unchanging trademark, consumers may perceive the brand as inflexible or even dull.
If a rights holder wishes to modernise its trademark periodically, it must usually be required to register a new trademark. The new mark will have a later priority than its predecessor and thus may be subject to opposition by owners of thirdparty marks which have been registered in the meantime.
To avoid this detrimental effect, rights holders may make use of so-called ‘fluid’ trademarks. Fluid trademarks are variants of an underlying trademark with which consumers are already familiar, without completely replacing the underlying mark.
The most notable example of a fluid trademark is the ‘Google Doodle’ used by Google Inc.
Fluid trademarks are often used for seasonal advertising (eg, Christmas) or to emphasise the image of a certain product. For instance, German confectionery manufacturer Haribo GmbH & Co KG often uses variations of its underlying ‘bear’ trademarks (as illustrated on this page).
From a marketing perspective, fluid trademarks can effectively enhance the advertising value of a brand. However, using fluid trademarks can have a downside. The rights holder must make use of the original registered trademark or risk a potential infringer raising the non-use defence in infringement proceedings, or even filing for cancellation of the underlying mark in extreme cases.
The Federal Court of Justice has held that, in general, a trademark must be used in its registered form (July 17 1997, I ZR 228/94, ECCO I).
A registered trademark must be used after the grace period has expired (ie, within a five-year period), which commences either after the date of registration or after a final decision has been issued in opposition proceedings, as the case may be.
In case of trademark infringement proceedings, German trademark law stipulates a floating five-year term to prove use of the trademark for the protected goods or services. If the trademark on which the infringement proceedings are based has been registered for more than five years when the lawsuit is filed, use of the trademark must be proven within the five years preceding the filing of the lawsuit (see Section 25(2)(1) of the Trademark Act). If the five-year term expires after the lawsuit has been filed, the rights holder must prove use during the five-year term before the closing of oral proceedings (see Section 25(2)(2) of the Trademark Act). In opposition proceedings there is a corresponding floating five-year term to prove use. If the trademark on which the opposition is based has been registered for more than five years when the opposition is filed, use must be proven within the five-year period before publication of the registration of the opposed trademark (see Section 43(1) of the Trademark Act). Otherwise, the proprietor of the opposing trademark must prove use of its mark in the five-year period before an opposition decision is issued. Failure to prove use of the trademark results in loss of the infringement action or opposition proceedings. Additionally, the opponent may instigate cancellation proceedings based on non-use (Sections 49, 53 and 55 of the Trademark Act). Exception to the rule German trademark law provides an exception to the rule which mitigates the seemingly incompatible demands of using fluid trademarks and the obligation to use a