Trademark Fluidity. A concept applied to distinctive signs

This article first appeared in Bugnion Journal – To view the Journal in full click here

In the Internet age, a new approach to distinguishing products and services is replacing the traditional concept of trademarks. This new perspective regarding distinctive signs has brought us fluid trademarks (Google doodle). There are no known decisions or rules of law that expressly provide for fluid trademarks in the EU. As a result, the only way this matter can be addressed is to identify the essence of the fluid mark and apply current court decisions and the rule of law. Analysis should focus on fluid trademarks as distinctive signs, signs with a decorative purpose and signs used in trade that are different from the form in which they were registered. There is a straightforward strategy already in place that enables companies to file for protection of fluid trademarks. It is always crucial to start with a strong trademark. Before considering the fluidity of a mark, it is best to begin with the basics: namely, selecting, enforcing and strengthening a secure and robust distinctive sign – there would be no Google doodle without a strong Google sign.

When the basic trademark is fully and easily recognised by consumers, a focus can be placed on adopting a style leading to fluidity. Such a style – which maintains the personality of the main mark – is the signature of a fluid trademark protection strategy. Based on a cost-benefit analysis, when there are so many variations in a fluid mark that it would be unreasonable to file for protection for each version, multiple designs enable ornamental rights to be claimed on these variations.

The scope of mixing and matching trademark and design tools can secure comprehensive protection for many aspects of the same sign – in particular, pairing trademark protection for the main sign with alternative variations. In In re Galletas Gullon SA v EU Intellectual Property Office (Case T-404/16), the EU General Court highlighted the main issues relating to the alteration of trademarks that would apply to fluid marks. In essence, The General Court found that where the form of the sign used in trade differs from the form in which the sign was registered only in negligible elements, with the result that the two signs can be regarded as broadly equivalent, the obligation to use the registered trademark may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade.

This will allow its owner to make variations which, without altering its distinctive character, enable it to be better adapted to the marketing and promotional requirements of the goods or services concerned. Branding companies and professionals have fully embraced the concept of fluid trademarks. Dealing with the fluidity of distinctive signs in terms of protection and enforcement is like the labyrinth of the Minotaur – the deeper we delve into the maze, the more difficult it is to escape.