MOTION TRADEMARK: UNCONVENTIONAL TRADEMARK
Unconventional trademarks as the name suggests are trademarks that are not conventional or usual in nature. This article is an overview of one such trademark known as Motion Trademark or Multimedia Trademark.
Simply put motion or multimedia trademark is a moving trademark. It is usually a clip which is a combination of moving pictures and sound together. With the advent of technology and use of social media several new ways of advertisement have emerged, a catchy slogan or sound combined with a unique moving picture has become a prominent part of several brands.
The first country to allow registration of motion trademark in 1996 was United States of America of famous Columbia picture’s multimedia logo of women carrying a torch. USTPO allows submission of such marks in several formats including short videos, animated clips and still photos or screenshots depicting each stage in multimedia clip.
Japan, in 2015 further paved the way and allowed registration of such trademarks as ‘dynamic design’. Keeping up with the advancement in technology EUIPO updated its Regulation in October 2017 and replaced the requirement of ‘graphical representation’ with following requirement ‘which enables the competent authorities and the public to determine the clear and precise subject matter of the protection of trademark’. Following this several EU countries amended their laws in accordance with the EUIPO directive. United Kingdom and Germany amended their laws in January 2019 and France in February 2019. Relevant laws of Canada amended in June 2019 also make the registration of unconventional trademark more convenient.
Motion Trademark in India prima facie falls beyond the scope of definition of trademark under Section 2(1) (zb) of the Trademark Act, 1999 which defines a trademark as a mark which capable of being presented graphically and is capable of distinguishing goods or services of one person from those of others and may include the shape of products, their packaging and combination of colours.
The requirement of graphical representation of a trademark poses a huge hurdle in their registration. Many applications were rejected initially for they were not clear, precise, easily accessible, durable and objective in view of Indian Trademark Registry that being said Trademark Act, 1999 does not prohibit registration of motion trademark per se, to accommodate eligibility of motion trademark and for a broader interpretation of the requirement of graphical representation of trademark with respect to unconventional trademarks namely, colour, shape and sound trademark, Draft Manual 2019 is to be read with section 2(1)(zb) and Rule 2(1)(k) of Trademark Rules, 2017. Registration of motion trademarks is thus much more complicated than conventional trademarks. The trademark must qualify following three thresholds before acceptance for registration:
The applicant must prove distinctiveness of trademark. The general requirement of trademark to be able to distinguish its goods from those of others is higher for motion trademark. The applicants have to present cogent evidence of association of trademark with their name among general public.
SOURCE OF ORIGIN:
True purpose of a trademark is to identify the source of origin. In respect to motion trademark the applicant must be able to prove through the multimedia clip that the public recognizes the trademark and associate it with particular goods or services. Recognition among general public proved through a survey can be submitted to pass the said threshold.
Functionality of a trademark is another important requirement. A motion trademark must be functional i.e. it must be able to influence sales or accrue profit to the brand through its use however at the same time applicant is not allowed to monopolise general features that are common and essential to all the traders in the industry. Thus an applicant must be able to produce direct or indirect evidence to be able to acquire registration on motion trademark.
The first motion trademark to be accepted in India was in the year 2003 of NOKIA CORPORATION’S famous trademark CONNCETING HANDS vide application no. 1246341 however it is accepted as a device trademark wherein several screenshots/still pictures are shown depicting step by step motions. This way of depicting motion trademark is generally followed in many countries. However few countries also allow submission of multimedia clip with clear description of everything that happens in the clip for precise protection.
Recently TOSHIBA after its successful registration in UK as first motion trademark also applied for registration in India vide application no. 4093005 in 2019. Interestingly the registry raised objection on registration of trademark stating that motion trademarks are not accepted in India however later accepted the mark.
A combination of moving pictures to depict the animation along with the sound is the basic requirement for a correct representation of motion trademark and thus it is safe to say that Trademark Act, 1999 is running obsolete with respect to the advancement in technology. Leading and innovative brands are not as free in expressing their brands through innovative means for the lack of protection of their IP. It is not that the act does not recognize unconventional trademark, the wider interpretation of provisions of statue and rules read together legitimises the registration of unconventional trademark however the legislative and procedural requirements makes it tough to be registered.
On the other hand many contemporaries of India including United States and UK as well as many Asian countries have already acknowledged unconventional trademark and have removed the need of graphical representation of trademark.