09 Nov 2020

Face masks, fluid trade marks and the “new normal”: Factors to be considered by brand owners under COVID-19

Authored by: James Dunne

In Brief:

  1. The extent to which adapted logos or ‘fluid trade marks’ should be protected will depend on the circumstances of each particular brand.
  2. The trend for industry sectors to ‘pivot’ runs the risk of brand owners offering new goods and services for which the need for trade mark protection was not even contemplated in the past.
  3. The key question for brands owners is not what can be protected, but what should be protected.

COVID-19 and fluid trade marks

2020 has seen unprecedented changes around the world, both economically and socially, due to COVID-19. The messages to “wear a mask” and observe “social distancing”, virtually unknown only 12 months ago, are now part of daily life.

Many brand owners, in recognition of these changed times, have leveraged their existing trade marks and brand recognition to help communicate these messages to the public.

Yum Brands Inc (owner of KFC) announced in August 2020 that KFC would temporarily suspend use of its famous slogan “It’s finger lickin’good” due to COVID-19. As KFC stated: “We find ourselves in a unique situation - having an iconic slogan that doesn’t quite fit in the current environment”. In use since the 1950’s, it is said that the slogan will return when the “time was right”.

Similarly, Coca Cola, Volkswagen, Audi and McDonalds are some of the many brand owners who, throughout 2020, have rolled out adaptations of their iconic trade marks to promote social distancing:

The demise of the handshake and use of the ‘elbow bump’ as a form of greeting has been cleverly referenced by Hyundai’s adaptation of its existing ‘H’ trade mark logo.  Originally created to show two humans shaking hands, the adapted version now shows them ‘elbow bumping’:

While promoting social messages, these clever adaptions of existing trade marks have the additional benefit of also promoting the particular brand.

Known as ‘fluid trade marks’, this category of trade marks is often used only for a particular length of time, a particular season, or to reference an event, and used in conjunction with (not in replacement of) the existing trade mark. Perhaps the most famous example of a fluid trade mark is the Google ‘Doodle’, a variant of the GOOGLE trade mark which periodically appears on the Google home page, and was first used in 1998.

The question of whether these fluid trade marks should be registered will be a commercial decision for the brand owner, taking into account a number of factors. These include:

  1. the intended duration of use;
  2. the risk of infringement;
  3. the time and cost of registration in a particular jurisdiction;
  4. the extent to which unregistered trade mark rights are recognised in a particular jurisdiction; and
  5. the potential availability of other remedies under copyright, anti-competition law, bad faith, or similar.

The consideration of whether or not to register will also need to factor in any changes to the goods or services that are offered under the trade mark(s). This is discussed below.

Pivoted goods and services

As consumers have adapted to the challenges posed by COVID-19, so too have industry sectors pivoted.

In the textile sector, various brands (ranging from H&M to LVMH) have repurposed their manufacturing capability to manufacture ‘personal protection equipment’ (PPE) while plastic card manufacturers, such as Bristol ID Technologies, are using their expertise in plastics manufacturing to produce face shields.

Equally, the prevalence and use of face masks in the “new normal” has seen a range of brands identify this new section of the market and offer branded face masks as fashion accessories. For example, luxury Austrian apparel company Wolford now offers its ‘Wolford Care Mask’ alongside its existing premium clothing and accessories lines.

In other industry sectors, alternative services are being offered to consumers as a pivoted means of revenue generation. In the aviation sector, sightseeing “flights to nowhere” (such as Qantas and a seven-hour scenic flight over Australia's Outback and Great Barrier Reef) or “stationary dining” (such as Singapore Airlines with lunch/dinner services on a parked Airbus A380) both sold out within minutes.

This raises the question of the scope of trade mark protection for any new goods or services being offered to consumers. Only 12 months ago, these goods or services may not even have been contemplated and, as a result, are unlikely to be covered in any pre-existing trade mark registrations.

The extent to which these new goods or services now form part of a brand must be considered against the scope of protection offered by any existing trade mark portfolio.  As we have discussed in previous articles, holding a registered trade mark right significantly increases the ability of a brand owner to take action against third party infringers using an identical or similar mark.

As with any “fluid trade marks”, the same factors need to be considered in evaluating whether or not to obtain a registration to cover any new goods or services.

Conclusion

As with any trade mark protection strategy, the ‘easy’ approach (albeit at significant and often unnecessary cost) is to cover everything: all variants of the relevant trade marks, for a very broad range of goods or services and in a large number of countries.

However, we recommend that the correct approach, particularly in a time of reduced budgets, is to adopt a strategic view. This commercially focussed approach requires a shift of thinking, from “what can be protected?” to “what should be protected, and where?”.

If you would like more information, or have any questions, please email James Dunne, Head of Trade Marks & Brand Protection j.dunne@hadefpartners.com or your usual Hadef & Partners contact, and we would be pleased to discuss the most appropriate brand protection strategy for your needs.

 
 

This article, including any advice, commentary or recommendation herein, is provided on a complimentary basis without consideration of any specific objectives, circumstances or facts. It reflects the views of the writer which may, in some cases, differ from those of the firm, especially in the developing jurisdiction of the UAE.