COVID and the rise of the give-me-space trade mark November 2020

By HANS MUHLBERG, Published in Intellectual Property - Law

This article deals with fluid trade marks. If you're now thinking, "Give it a rest... I just can't keep up with this trade mark nonsense anymore", relax - the term simply refers to the by-now quite popular practice of brand owners using variations of well-known brand names or logos.

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Fluid trade marks became quite big when Google started doing the whole Google Doodle thing. Others followed suit, like Perrier, who thought it would be really fun to replace Perrier with other words with an ier suffix – Sexier, Crazier, Flirtier. I'm not sure if this one made the cut – Sillier!

These days much is, of course, dictated by COVID. Companies need to take account of the public mood. They need to show that they care. As a result we have some pretty weird stuff going on with logos.



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Take the Golden Arches logo of McDonald's. You know what it is of course, it's a stylised letter M. Or is it? If you're one of those who always thought that it looks a bit more like .. well, you know... there's stuff on the internet that says that Freudian symbolism was, in fact, the original thinking behind it. I offer no opinion!

But now the Golden Arches logo looks quite different. There's considerably more distance between the arches. Now it looks like... oh, I don't know, you decide. But the intention is very clear, it's to drive home the message that customers need to keep their distance.

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On the topic of driving home, automobile companies are very much into this social distancing thing. VW has jumped on the station wagon by clearly separating its V from its W – in case the message is a bit too subtle for VW owners, the company has also added the phrase Thanks for keeping your social distance. Audi has separated its rings and also reinforced the message with the decidedly more peremptory Keep distance. Not nearly as uplifting as Vorsprung durch Technik.




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There are, no doubt, mixed views on all this. Some eager-beaver branding-types will applaud and say that you need to do stuff like this to keep the brand fresh and relevant. Crusty old lawyers, on the other hand, might mutter words like naff, predictable and desperate. But this is a legal publication, so let's at least make some attempt to address the issue of whether any of this matters from a legal perspective.

For example:

Does the brand owner need to do a clearance search to make sure the variant is available? In most cases, probably not, because the variant will be very similar to what is already in use and already registered, in other words the main mark. But in the case of the Golden Arches, the variant does arguably look like something quite different. A pre-use clearance search might, therefore, be appropriate in a case like this.

Does the brand owner need to register the variant? Plenty of experts will tell you that the brand owner must most certainly register the variant. They will say this with absolute conviction. But the conviction may simply be that the fees generated by a nice juicy trade mark filing will come in very handy.

In most cases I suspect there will be no compelling need for further registration. Variants of this sort tend to have a short lifespan, so the chances are that the variant will no longer be in use by the time it is registered. And if it is no longer in use, it's unlikely that it will be copied.

Moreover, the variant tends to be so close to the main mark that the trade mark owner should be able to rely on the registration for the main mark, should anyone copy the variant. Finally, if there is copying of the variant, the trade mark owner might even be able to rely on other rights, like copyright.

Is there a risk that the registration for the main mark will become vulnerable to attack for non-use? This seems unlikely. For starters, in cases where proof of use is required, the law accepts proof of use of a mark with alterations or additions that don't substantially alter the identity of the registered mark. So, use of the variant should generally save the registration for the main mark. Besides, it is very likely that the main mark will remain in use, in addition to the use of the variant.

COVID may have changed branding practice. But not trade mark law.

Muhlberg, is an SA, UK and EU qualified IP lawyer. He presently finds himself in Europe, offering consulting and content writing services to various law firms: muhlbergip@gmail.com.