Creating new images and periodically modifying marks is arguably the best way to focus consumer attention

This article first appeared in World Trademark Review magazine issue 44, published by The IP Media Group. To view the issue in full, please go to www.worldtrademarkreview.com

The fulfilment of a trademark’s distinguishing function relies on consistent interpretation of a static sign by the average consumer.
Companies that wish to present themselves through their trademarks in a way that resonates with consumer demands advocate a solid understanding of the specifics of their particular sector and the need for long-term, consistent communication with consumers.
Changing methods of communication and accessing information – particularly in today’s internet age – have led to the emergence of a scenario that could not have been predicted even a few years ago: total customisation of the communication channel between company and consumer. As yet, this has received little attention in terms of analysis of the protection of distinctive signs.
Companies are beginning to prioritise the need to use novel and innovative images and stimuli to capture consumers’ attention and engage with online users’ customisation experiments.
Creating new images and periodically modifying them is arguably the best means to focus consumer attention on specific elements or messages.
It is against this backdrop that Google emerged as the frontrunner in the successful periodic visual modification
of its trademark, which is often subject to imaginative makeovers in order to mark or coincide with various occasions or events.
This innovative form of communication adopted by Google requires analysis from several perspectives. Are changes to a
trademark that do not alter its distinctive character – whether in terms of visual design, packaging modes or the method of communication – worthy of protection in themselves? If so, how? The answers to these questions must be linked to an analysis of average consumer perception of the messages that a mark portrays.
Modifications to a trademark are subject to protection and, depending on how they are perceived, are covered by a range of instruments provided under Italian law aimed at safeguarding consumer trust.
Any changes to a mark or variations in modes of communication which are sufficiently distinctive as to be perceived in themselves as distinctive elements, or even simply suggestive elements that can be linked to the origin of the goods or services, should be protected by trademark. This applies to both registered and de facto trademarks, in view of the protection afforded to the rights holder of an unregistered trademark that is in use, provided that such use is not limited in geographic terms.
If an alteration to a trademark containing an image or graphic is perceived by consumers as an element which, while not fulfilling a distinctive function, creates an impression on the informed user that is materially different from the overall impression created by other images, then the best form of protection would be a national or Community design, whether registered or unregistered.
If the change has no distinctive function and is insufficiently distinctive to elicit an impression that is materially different from that elicited by the registered mark, but where there nonetheless exists a likelihood of confusion with graphic elements used by other companies in the same sector, then it would fall within the scope of protection afforded by the Civil Code, which prohibits acts of unfair competition due to slavish imitation.
It is common practice in Italy to claim protection for a graphic or simple creative concept through the publication of an IP claim allowing for description – and therefore identification – of the promotional message without providing exhaustive details of its expression.
This instrument is used mostly by advertising agencies and creative professionals working in the communications and visual merchandising fields, but could be relevant to issues regarding changes in the graphic appearance of distinctive signs, and therefore to fluid trademarks.
The above-mentioned instruments are the primary tools which rights holders can use to defend their business and protect their consumers from any misleading competitor practices in the wake of a successful fluid trademark strategy.
Two recent examples in Italy demonstrate how fluid trademark practice and related legal protection doctrine could open the door to considerable success, which in turn is likely to lead to copycat behaviour.
The first example relates to a marketing campaign by Coca-Cola Inc. The beverage giant gave consumers the opportunity to customise cans with their first name or other words, such as ‘mum’ or ‘friends’, in its signature script and red and white trade dress.
But what if one of these hundreds of common names were confusingly similar – or even identical – to an existing trademark in the same field (ie, nonalcoholic beverages)? How could Coca-Cola defend its business and protect consumers in a situation where a competitor launched a new soft drink called, for example, ‘Nicola’, ‘Mum’ or any other name that was identical to one of the hundreds of names used in its campaign?
In such a scenario, Coca-Cola would likely take strong action in order to distinguish itself from the competitor – but only in a case where the name used by the competitor was one element among many (eg, script and/or colours) that would likely cause confusion.
A significant fluid trademark experiment in the fashion industry relates to the phenomenon of ‘Keep Calm’ t-shirts. There is currently a huge quantity of t-shirts on the market bearing the wording ‘Keep Calm and…’ This wording could be considered as an unusual fluid trademark.
Despite the fact that the signature crown on top of the cited script is not a fixed element of the ‘Keep Calm’ t-shirt design, there is no mistaking this particular style of t-shirt and the distinctive function accomplished by some of its fluid elements.
Furthermore, given that consumers can choose from more than 10,000 different t-shirt designs, fighting against possible counterfeits is somewhat futile. However, the fight against counterfeits should not be neglected if a company or a criminal organisation is investing or laundering money originating from illicit activities in the production and sale of ‘Keep Calm’ t-shirts. In such cases, who would be entitled to prevent such traffic? And how should they do it – by invoking trademark, design or copyright infringement or slavish imitation?
Interested parties are advised to keep calm and solve the conundrum!