Safeguarding dynamic marks and slogans in India
Fluid trademarks and slogans are excellent marketing tools as they engage customers and improve sales, but their enforceability remains challenging.
Brands help businesses to create unique names and images for their products and services in consumers’ minds. The stronger the brand, the better its reach in attracting potential customers and retaining loyal ones. With the advent of digital technologies, companies are better equipped to engage customers. Most brand owners now market their products through a dynamic approach encouraging interaction with varied consumers. In today’s competitive market, with numerous technologies and platforms available, brands are showcasing their creativity to engage consumers.
Such dynamism is displayed in fluid trademarks, as well as slogans and taglines. Even though there are stark differences between fluid trademarks and slogans, these forms of trademark are intended to serve the same purposes (ie, continued association with brand and their owners and real-time interaction with the consumer base).
The concept of fluid trademarks flows from the definition of a ‘trademark’. A trademark is a recognisable sign, mark, name, logo, design or expression which differentiates products or services of a particular source (eg, a brand owner) from those of other sources (eg, a third party or other brand owner). A trademark or logo is essentially a source identifier which is consistently used by the brand owner for its product, service or business. The main objective of using a particular mark is to ensure that the customers or the public associate that mark with a specific brand owner in order to build up a consumer base.
A fluid trademark is a variation of a trademark, essentially with added features or modifications over the core essential mark. In a business sense, fluid trademarks are aesthetically created in order to strengthen brand loyalty and are interactive in order to jog the customer’s memory regarding brand identification. As the term suggests, the innate nature of fluid trademarks is to be mobile, active and continually evolving. Further, fluid trademarks are generally used for shorter periods.
The classic fluid trademark example is the ‘Google Doodle’ – interactive, animated and playfully designed to align with regional and international events, festivals and notable people.
In India, Kaira District Co-operative Milk Producers Union Limited, the owner of the Amul brand, is widely recognised for promoting its brand through an advertising mascot, the ‘Amul girl’, which was first designed in the 1960s. The Amul girl has emerged as one of India’s best advertising concepts. Over the years this mascot – essentially a hand-drawn cartoon of a young Indian girl in a polka-dot dress with blue hair tied up in a ponytail – has been used to indicate various events of national and political importance in India.
Brand owners across the globe are constantly being innovative in relation to brand mobility; however, the legal enforceability of fluid trademarks is yet to be tried and tested in many parts of the world, including India. Two key challenges to the enforceability of fluid trademarks are:
- loss of essence of the core essential trademark – excessive and random variations may weaken existing rights in the underlying mark; and
- lack of proper branding – a ‘one step at a time’ approach is needed; unless the brand owner prepares the audience, customers may fail to recognise the brand when a new variant appears.
To escape such pitfalls, brand owners should observe the following non-exhaustive factors to strike the perfect balance for ultimate brand recognition:
- retaining the core essential trademark – the underlying core mark and its signature styling should never be abandoned and should be used concurrently with other modes such as product packaging, business letter heads and published materials;
- recognisability – the underlying core trademark should be easily recognisable in any new variant of the fluid mark;
- trademark registration – the core essential trademark should secure registration and the variants, if necessary, can be applied as a series of marks;
- copyright protection – artistic features and elements added onto the core trademark can be copyrighted in such forms; and
- the age of the business – since the concept of fluid trademarks works best when the core essential trademark is etched into the minds of consumers, new businesses should be cautious when putting out modified versions of their comparatively new primary trademarks.
While fluid trademarks are the result of an aesthetically creative approach, slogans are trademarks that, in most cases, describe the product. Slogans are one of the essential marketing and advertising tools used by brand owners. Slogans can be phrases or a combination of terms and statements used by brand owners in the form of a tagline. These are easily identifiable by consumers as originating from a specific brand owner. Some of the biggest and most popular brands have their most widely recognised slogans in the form of catchphrases, such as:
- Nike – “Just do it”;
- L’Oréal – “Because you’re worth it”;
- KFC – “Finger lickin’ good”;
- McDonalds – “I’m lovin it”;
- Amul – “The taste of India”;
- Thums Up – “Taste the thunder”; and
- Frooti – “Fresh N Juicy”.
Therefore, slogans are essentially source identifiers which are consistently used by the brand owner in respect of its business.
Phrases and terms constituting slogans and taglines can be protected under the Trademarks Law. In order to secure protection, the slogan or tagline must be inherently distinctive or have acquired secondary meaning among the trade and public through prolonged use. Slogans and taglines are protected by remedies emanating from both statutory and common law rights (ie, infringement and passing off actions, respectively).
Since slogans are made up of common terms and are descriptive in nature, the chance of them being inherently distinctive is reduced. In such scenarios, brand owners are likely to plead acquired distinctiveness, claiming that their slogans have acquired secondary meaning owing to long continuous and extensive use in the public space. However, secondary meaning is tricky to acquire and brand owners must provide appreciable evidence to support their case.
In Procter & Gamble Manufacturing (Tianjin) Co Ltd v Anchor Health & Beauty Care Pvt Ltd (FAO(OS) 241/2014) the single judge order restraining P&G from using the trademark ALL-AROUND PROTECTION and ALLROUNDER, or any other mark deceptively similar to Anchor’s trademark ALLROUND, was upheld by the division bench. The court noted that Anchor marketed its product using the expression ‘allround protection’ which connoted the peculiar quality of the product. These words were held to be non-descriptive. The two-judge bench adjudicated the importance of slogans and taglines, observing that:
the use by Anchor of the expression ‘ALLROUND PROTECTION’ in its advertisements and on its product is as a slogan or a tagline. Such slogans/taglines are definitely a trademark within the meaning of Section 2(m) & (zb) of the Act, being capable of represented graphically and distinguishing the goods of one from another... Such slogans or taglines as ‘ALLROUND PROTECTION’ in advertisements, grab attention and are sometimes better known than the branded products themselves; such slogans/taglines/expressions are marketing and communication tools par excellence and directly impact the consumers by encouraging them to choose certain goods or services over others... often it is found that it is such slogan/tagline/expression which lingers in the minds of the consumers and which remains as an after taste of an advertising campaign; slogans/taglines often become so distinctive of a product that the trademark affixed on the product may need no mention... A distinctive as compared to descriptive slogan, conveys the company's and the product's essence as well as what it aspires to be and conveys the commercial expression to the consumers. It promotes memory recall.
However, slogans combined with house trademarks are in a stronger position in respect of their enforcability.
In Burger King Corporation v Gurpreet Singh Sekhon (CS(OS) 959/2015) the plaintiff (Burger King Corporation) sought protection of its trademarks BURGER KING and HUNGRY JACK’S and their logos, along with protection of the catchphrase HAVE IT YOUR WAY. The defendant had filed an application for registration of the logo containing the mark HUNGRY KING in Class 30 and were also found to be using a similar catchphrase, ‘Have it Kings Way’.
The court held that:
the mark of the defendants is extremely similar to the marks of the plaintiff. In fact, it is a blend of the two marks of the plaintiff. The same is further aggravated by the fact that the Hamburger Design Logo has also been copied… In order to further portray their products as that of the plaintiff, the defendants have even adopted a slavish imitation of the slogan of the plaintiff… Accordingly, applying the foregoing test I am of the view that the defendants have tried to dupe the general public by portraying their products in a manner that they originate from the plaintiff. Such usage would inevitably lead to loss of revenue as also that of goodwill. Accordingly, the defendants have indulged into the offence of passing off.
Both forms of trademark are excellent marketing tools for businesses. Not only do they create brands, but they also engage customers, thus improving a product’s sales appeal. However, the enforceability of fluid trademarks and slogans remains challenging.
Ranjan Narula founded the specialist IP law firm RNA in 2004 and is now managing partner. He has 27 years’ post-qualification experience working on contentious and non-contentious IP issues. Mr Narula has been practising as an advocate and patent attorney since 1991, handling a wide range of IP, IT and technology matters, including IP management issues, strategic advice on IP clearance, acquisition and enforcement. He has worked in-house and in private practice, including a stint with an international IP practice. He has a degree in industrial chemistry and is a registered patent agent, regularly advising clients in industries, including pharmaceuticals, information technology, telecoms, apparel, fast-moving consumer goods, confectionery, beverages and finance.
Akanksha Kar is a law graduate from Campus Law Centre, the University of Delhi, and has more than seven years of post-qualification experience. She joined RNA in 2013 and is currently working in the dispute resolution team dealing with non-contentious and contentious IP matters and enforcement. She advises clients on a wide range of IP matters, such as brand clearance, enforcement action, opposition matters, infringement proceedings, online infringement and counterfeits, as well as domain name disputes. Ms Kar appears before various forums, such as the Trademarks Registry, district and high courts and the Registrar of Companies.