Uhthoff, Gómez Vega & Uhthoff
Rights holders must always bear in mind the importance of incorporating core elements of the registered mark within the fluid version
Major companies such as Google, Inc, Saks & Company, the Coca-Cola Company and the Absolut Company AB have taken advantage of fluid marks to promote their products and services.
According to the Mexican Trademark Law, a ‘trademark’ is “any visible sign that distinguishes goods and/or services from others of the same class or kind in the market”. In other words, trademarks are designed to help their owners offer, market and position their goods or services in a distinct manner from those offered by third parties.
A ‘trademark’ is a word, group of words or set of words or graphics which helps to identify the goods or services being offered with the person or company offering them. Although these are most commonly static, two-dimensional terms or designs, in certain jurisdictions smells and sounds can also qualify as trademarks.
Some companies are choosing to update their brands with different colours, shapes and elements in order to energise and revitalise them. The thinking is to keep the mark fresh, without misleading the consumer as to what brand is being promoted, and thus allow brand owners to compete in increasingly demanding markets and catch the eyes of consumers with short attention spans.
New ways of thinking
These fast-moving, fast-changing marks are known as ‘fluid trademarks’, where the elements used within them are constantly and substantially amended and updated. How many times have you landed on Google’s home page and realised that the trademark has been altered to refer to an event, a person or a special day?
Google is not the only company to use fluid trademarks to promote its business. Other examples include Coca-Cola and Absolut Vodka.
In fact, not only are rights holders allowed to change the way in which they use their trademarks, some companies have provided their consumers with the same rights. In one recent initiative, Mars provided its customers with a template set of letters, so that each customer could personalise his or her own chocolate bar as he or she wished.
When we see any of the trademarks referred to above, we know what the brands are and what goods or services they relate to. However, there is much debate over whether marks that have been substantially modified are subject to the same protection as traditionally registered marks.
Situation in Mexico
Article 128 of the Industrial Property Law expressly provides that a distinctive sign (ie, trademark or commercial slogan) “should be used in national territory, in the same way as it was registered, or with modifications that do not alter its distinctive character”. However, fluid trademarks have been substantially altered. Could these changes eventually alter the distinctive element of the protected mark?
There is a danger that many companies are using versions of their marks – in many cases their house brands and thus significant assets – which are substantially different from the registered mark. This in turn leads to the risk that a third party could:
- launch a cancellation action on the basis that the mark in question is not being used in the same form in which it was registered; or
- mount an infringement action, if it considers that the use made of a brand through a fluid trademark is infringing its own IP rights.
There is currently no express protection for fluid marks in Mexico. Rights holders should therefore ensure that they always register their trademarks as word marks, as this will enable them to use the mark in any colour, shape, logo or figure. If rights holders use fluid marks in a continuous and distinctive way without seeking this kind of protection, a third party could easily start using a similar mark, which could mislead consumers and damage the brand.
In order to avoid a cancellation action based on the grounds that, although the registrant is using its trademark, it is not doing so in the form in which it was registered, rights holders using fluid marks should continue to use the registered form of their marks. This should suffice to avoid a non-use cancellation action.
Given that marketing and intellectual property are related disciplines, specialists in both areas should work together to strengthen their distinctive signs and ensure that the rights deriving from a trademark registration are strong enough to be asserted. In other words, before adopting a strategy of using fluid marks, rights holders should discuss the potential impact with local counsel and take action to prevent the loss of trademark rights. Adopting a best practice manual can help to ensure that fluid marks will enhance the brand without jeopardising the owner’s rights.
While there is no current protection for fluid marks, this may be set to change. A reform of the Industrial Property Law is due within the next few months. This would be the perfect time to start discussions about how best to protect fluid marks, alongside other non-traditional trademarks.
In conclusion, fluid marks constitute a creative way to keep a brand evolving and to attract consumers. However, rights holders must always bear in mind the importance of incorporating core elements of the registered mark within the fluid version, to avoid leaving themselves vulnerable.
Carolina Ponce is an associate at Uhthoff, Gomez Vega & Uhthoff, SC, specialising in trademarks. She holds a law degree from the Universidad Iberoamericana (2008) and is a member of the Mexican Association for the Protection of Intellectual Property. Ms Ponce is fluent in Spanish, English and French.