In today’s digital age, animated or moving-image trademarks are becoming as recognisable as company names, but how do you know if your moving-image device is registrable as a trademark? Dr Ralf Sieckmann continues our series on less traditional forms of IP with a look at registering and protecting moving images.
Just as technology and marketing techniques have developed the manner in which businesses interact with the consumer, the types of signs used to promote and identify goods and services have evolved beyond ‘traditional’ trademark categories. Today’s businesses are not simply protecting brand names and logos, they are also registering less conventional devices, including moving-image and animated trademarks.
Moving-image and animated devices can attract consumer attention more readily than two-dimensional trademarks and are often as memorable as a company’s name or logo, helping that company gain a significant advantage over its competitors. Their use is particularly prevalent on the Internet and in the entertainment industries. Many web browsers feature animated devices in the top right-hand corner of the browser screen, and moving-image marks can often be seen at the openings of films. Registrations for motion marks by Netscape Communications Corporation, Columbia Pictures Industries and Twentieth Century Fox Film Corporation were all approved by the USPTO in the mid-1990s.
However, despite the increasing number of such signs in the marketplace, moving-image trademark registrations remain relatively uncommon, often because they are not always recognised as ‘trademarks’ in the mind of the consumer. Applicants must also prove the distinction between a moving image that serves as a copyrightable work (an advertisement, for example) and a moving image that functions as an indication of origin and is therefore eligible for trademark registration.
The right to movement
In principal, trademark legislation should allow for the registration of moving-image trademarks, provided the mark is distinctive enough to be used by the business to identify itself and its services to consumers. However, national courts have responded differently to the legal questions and administrative demands posed by less ‘conventional’ marks of this manner. As a result, registering and protecting moving-image devices involves careful planning and a keen eye on rulings as they pass through the courts.
Animated devices can attract consumer attention more readily than two-dimensional marks and are often as memorable as a company's name or logo
Generally, the biggest challenge for the registration of non-traditional forms of trademarks (for example, scents, smells, sounds or tastes) arises in the method of graphically defining the device in trademark registrations. Trademark law requires registrants to provide a clear drawing of the device with a description of appearance and usage. Compared to the challenges of graphically representing sound, scents, smells and tastes, most moving-image marks can be represented on trademark applications with relative ease. However, businesses still need to pay attention to the way they describe and depict the moving device. To stand the best chance of success, companies should provide visual views of the device in various frames with descriptions of angle and appearance. Applicants can also support their application by attaching a recording of the mark on videotape, CD-Rom or computer disk.
Navigating national laws
In the EU, procedures for registrations of such ‘nontraditional’ trademarks were laid down more resolutely thanks to the 2002 Sieckmann case (Sieckmann v Deutsches Patent-und Markenamt). An attempt was made to register as a trademark a scent of a fine chemical methyl cinnamate (described by perfumers as balsamically fruity with a hint of cinnamon) to be used in the field of advertising, business services, teaching, legal and scientific services. Ultimately, the court ruled that a trademark could consist of a sign which was not itself capable of being perceived visually (in Sieckmann’s case, a scent), provided it could be represented graphically.
In the US, trademark practice requires a company to provide customer recognition of the device they are seeking to register. The US trademark manual for examination states that moving images used in varying forms do not function as a mark in the absence of evidence that customers would perceive it as a trademark.
Companies that can prove their motion device is unique in terms of design and customer recognition should find that their applications stand more chance of success. In the last decade, the EU, US and the Office for Harmonization of the Internal Market (OHIM) have accepted a growing number of trademark applications for moving-image marks. Whether this will start a trend for moving-image trademarks elsewhere, remains to be seen. Companies would be wise to assess their registration policies on a case-by-case basis.
A distinctive motion
Another difficulty arises in the need to define the level or degree of distinctiveness of a motion. Can a certain movement be a sign that is distinctive enough to differentiate a service from that of its competitors? Each case has to be examined separately on its merits.
As a general rule, registration should be possible if the applicant is able to demonstrate that the consumer is able to distinguish the goods in question as theirs. This will probably mean in practice, filing evidence of the past use of the motion device in the relevant jurisdiction or tactically limiting applications to devices that are significantly different from the norm. For example, the UK Patent Office approved the trademark application by Kraft Foods UK Ltd to protect the unique manner in which a Terry’s Chocolate Orange falls open. Likewise, the OHIM registered an animation which consists of hands coming together, shown in succession from left to right and from top to bottom, as used and displayed on the welcome screen of Nokia smartphones.
This article first appeared in IP Review, issue 14
