Can You Protect Fluid Marks?

Fluid marks are dynamic and interactive trademarks. To best understand what fluid marks are, one need not look any further than Google’s constantly changing doodles, appearing on its home page. One other great example of the fluid marketing campaign is the (Product)RED and Gap joint campaign. As per the campaign, the (RED) trademark was transformed into various words. For instance, EMPOWE(RED), UNCENSO(RED), DESI(RED), DISCOVE(RED), INSPI(RED), ADMI(RED), ADO(RED) and so on. This allowed the company to bring in a new dimension to the company while are the same time still keeping procession of the singular (RED) mark.

Looking at fluid marks from a trademark perspective

When looked at from a trademark perspective, there are unique challenges associated with protecting and enforcing fluid marks. As per the principle of the Canadian trademark law, the best manner in which a strong trademark can be built is only by signifying its source consistently over time. Over the years, Canadian courts have made it very clear that deviations from the original mark are not only objectionable but are also very dangerous and are comparable to playing with fire. The cancellation of the original trademark for non-use is also a significant risk.

Cancellation of trademark

As per the rules in Canada, after the third anniversary of its issuance, a trademark registration can be cancelled for non-use. This cancellation happens when the registered owner is not able to show that the mark has been used in the country in the three years preceding the commencement of the cancellation action. For the registration to sustain based on the determination that whether the mark being used is close to the mark as registered, a case by case analysis is required. Although minor updates and tweaks that might be not important to the mark’s overall impression will not lead to cancellation, relatively modest amendments can cause problems. For instance, the addition of a descriptive word to the trademark or the design element being omitted.

Get legal counsel before moving forward with fluid mark

If, as a brand, you are planning to adopt a fluid mark strategy, then you should consult a trademark lawyer in Canada. A trademark lawyer will help you determine if the existing registration(s) can be maintained by use of the modified marks. A good way of maintaining a registered mark is by using the mark along with the fluid mark.

Analyse if you have a strong trademark

An important point that should be taken into consideration before moving towards a fluid or flexible branding initiative is the strength of the mark that is being modified. Presenting multiple versions of a weak trademark can dilute the mark or render it generic. Frequently changing an already weakly branded mark will make consumer recognition more difficult.

For a successful fluid branding initiative, a multi-faceted approach is required. The original trademark should be used wherever it is practical to use them. At the same time, the modified version(s) should be registered.

Other trademark protection strategies

There are cases in which it is possible to register the core of the mark’s identity. Consideration should also be given to register a series of marks. Although this series of marks might not encompass every variation of the mark, it may be representative of the nature and scope that the various iterations present. With the registration of three or four representative variations of the mark, it can effectively stake a claim for a range of variations. In addition to these strategies, brand owners should remember that common law rights in a mark can be acquired through use, and that appropriate marking and legends can assist in ensuring that modified marks function as source identifiers. In addition, brand owners and their counsel should discuss possible protection under the copyright, industrial design and patent regimes.

Fluid marks are considered so fluid, that they could be protected under the expanded definition of a sign, which specifically includes a moving image. If colour forms the core of your brand’s identity, registration of a mark consisting only of a colour can be sought under the new legislation. To understand if you have a strong trademark and get a deeper insight into the Canadian Trademark law, get in touch with Prowse Chowne.