Harmonizing Motion Trademarks: Bridging The Divide With Graphical Representation Requirements

Trademarks play a major role in marketing, promoting, and differentiating goods/services of one from those of others. As a result, many businesses/companies are using the innovative marketing strategy by using Motion Marks to build a unique Identity. 

In today’s time, the concept of non-conventional marks, such as color or sound marks, is not entirely new. However, the idea of one specific type of such non-conventional mark, known as the Motion or Movement mark, is relatively novel in comparison to other non-conventional marks. 

This article aims to understand the recent trend toward the registrability of Motion Marks in India, the USA, the EU, and other nations. The article also focuses on the need to amend the procedural requirement of current provisions relating to Motion Trademarks.

What Are Motion Trademarks?

As per Article 3(3)(h) of EUTMIR, motion mark is a “trade mark(s) consisting of, or extending to, movement or a change in the position of the elements of the mark”. 

The WIPO Standard ST. 69defines motion mark as “a type of mark constituted by movement”. Usually, it is a short clip of a moving pictures. For example, Lamborghini’s car door motionorMicrosoft Windows logo.

Position Of Motion Marks In Foreign Nations

The first motion mark to get registration was in 1996 of Columbia Picture’s multimedia logo of women carrying a torch. Since, the U.S.A. has been allowing motion marks in various formats such as animated clips, short videos, etc. 

In 2017, the European Union’s Intellectual Property Office (EUIPO) updated its regulationwhich states that a motion mark can be represented through a video file showing movement or change of position. 

This welcoming step gave choice to the applicants to represent their motion mark either through graphical representation or via video file.

Subsequently, the EU countries such as Germany and France amended their laws to adopt EUIPO’s recommendation. Even UK amended their laws to include the option of representing the motion mark through Video File. Japan and South Korea also allow the registration of motion marks in their respective laws. 

In 2015, Japan took a step forward and opened the path for the registration of trademarks as‘dynamic design’. Therefore, it can be said that most countries accept the registration of Motion marks.

Indian Legislation About The Motion Marks

The Trademarks Act, 1999 (the “act”) does not expressly define or refer to motion marks. However, Section 2(1)(zb) of the act defines the Mark as “..a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of the others…”. 

Section 2(m) defines a mark as which includes “a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof”.

The Hon’ble Court in Lakme Ltd. V. Subhash Trading and Ors. the court held that “The definition of the word ‘mark’ as given in the Act is an inclusive definition”. Further, in Assam Roofing Ltd. &Anr vs Jsb Cement Llp&Anr, also it was held that “Section 2(m) of the Act gives an inclusive definition of ‘mark’”. 

Therefore, it can be said that the motion marks are inclusive under the definition of the mark. However, based onthe above-mentioned provisions, the motion marks are registrable under the Indian laws, only if they are capable of being represented graphically and are distinctive.

What Does Graphical Representation Mean?

The Trade Mark Rules, 2017, under Rule 2(1)(k), define graphical representation as “..the representation of a trademark for goods or services represented or capable of being represented in paper form and includes representation in digitized form..” 

This implies that all the dynamic elements of a motion mark must be capable of being represented on paper. This requirement poses the most significant challenge when registering a motion mark since accurately depicting the movement of its elements, along with accompanying sound, on paper can be difficult.

The First motion mark registered in India was Nokia’s ‘Connecting Hands’ mark having registration No. 1246341. It is important to note here that though it was a Motion mark it was registered by the registry as a device mark.

Some of the Motion marks that have been accepted and registered in India are:

1)  UPL Ltd.’s logo of Motion Mark is registered having registration No. as 4192672.

2)  The UPL OpensAg Logo having Registration No. as 4192678.

3)  The UPL’s logo having Registration No. as 4192668.

4)  Amazon Technologies Inc.’s motion mark having Application No. as 3468095 was applied but rejected by the registry based on similarity with other marks.

5)  Toshiba Corporation’s motion mark for ‘TOSHIBA’ having Registration No. as 4093005. Initially, the registry objected to an application by stating that “…Motion marks are not registrable in India”. However, the registry eventually reconsidered its position, leading to the acceptance and registration of the mark as a motion mark.

Conclusion

It is correct to say that the Indian Trademark Laws protect non-conventional marks including motion marks under the current law. But, the procedural requirement makes it difficult for innovative brand owners to communicate their brands to the public. 

The requirement of Graphical Representation is a huge hurdle for registering motion marks. Because of the same, a very large number of applications for registration of motion mark gets rejected by the registry.

In a digital world, there is a need to include other formats of representation of motion marks in multimedia formats such as MP3/MP4 files to remove dependency on the graphical representation alone. 

There is a high need to amend Indian Trademark Laws in this regard. Brands, often, find it difficult to express through innovative means as they lack the protection of their IP. 

Foreign countries such as the United States, United Kingdom, Germany, France, and many Asian countries have already removed the requirement for graphical representation of motion trademarks.

Refrences

1.  EUIPO Guidelines (europa.eu)

2.  ST.69 (wipo.int)

3.  M/S. Lakme Ltd. vs M/S. Subhash Trading And Others on 23 August, 1996 (indiankanoon.org)

4.  Microsoft Word – CS106j.doc (calcuttahighcourt.gov.in)

5.  Section 2 in The Trade Marks Act, 1999 (indiankanoon.org)

This article has been contributed by Gargi Joshi.