With the ever-growing popularity of motion graphics, increasing access to and ease-of-use of design software, both industry leaders and promising start-ups are seeking more than ever to protect their novel digital brands from theft or misuse. In today’s age, brands are no longer ‘flat’ or ‘static’. Innovation has taken over this aspect too, with brands now having permeated our senses through movement, scent, sound, colour and shape. Motion marks fall within the category of non-traditional marks which also cover multi-media marks, hologram marks and position marks. Brand communication has taken a turn and a life of its own. And this necessitates a higher level of protection than traditional IP laws used to offer.
Motion Marks in the EU
In 2008 the EU commenced the novel project for a total reform of trademark legislation. This resulted in the enactment of a new Directive (EU) 2015/2436 for the approximation of the laws of the Member States relating to trademarks and European Union Trademark Regulation (Regulation (EU) 2017/1001).
As from 1 October 2017, under EU law, the graphical representation prerequisite no longer applies when submitting a trademark submission. Therefore, presently, signs can be represented in any appropriate form using largely accessible technology, if such representation is clear, precise, self-contained, readily accessible, comprehensible, durable and objective.
The European Union Trademark Implementing Regulations (EUTMIR) lay down specific rules to be adhered to by applicants aiming at ensuring protection over non-traditional trademarks. This would include some technical conditions, in line with the specific nature and attributes of the trademark in question. One of the novel typologies introduced was motion or movement marks and multimedia marks.
Motion marks are defined as trademark(s) constating of, or extending to, a movement or a change in the position of a particular element, or group of elements of a mark. Article 3 of the EUTMIR does not limit motion marks to mere marks depicting movement, rather, a sign may also be considered as a motion mark if it is capable of showing a change or transition in the position of the elements (for instance, a sequence of still images). Indeed, it is crucial to depict the change when applying for a motion mark, therefore, the applicant must either provide a video showing the change or submit a series of sequential still images, showing the movement. Motion marks are strictly limited to the graphic representation, however if the particular change in motion has a distinct sound related to the movement, one can opt for a multimedia mark. Multimedia marks consist of a combination of sound and image.
Indeed, following doctrines under traditional trademark law, application for a non-traditional mark is not an absolute right, therefore the EUIPO reserves the right to refuse such applications. Together with the absolute grounds for refusal - a motion mark may be refused registration, when it transpires to the Office that a reasonable observant person, with normal levels of perception and intelligence would not be able to understand precisely what the mark consists of, without spending a huge amount of intellectual energy and imagination. A sign needs to be sufficiently clear and precise, to limit the risk of each consumer interpreting it in a different way.
Malta: Motion Marks
Through Act XII of 2019, Malta widened the definition of trademark and its registrability and transposed Directive (EU) 2015/2436 into our law. Chapter 597 of the Laws of Malta presents the new Trade Marks Act 2019 with article 4 being widened to include the registration of non-traditional marks, including motion marks. Article 4 of the new Malta Trademarks Act provides that any mark needs to be represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.
Motion Marks: Moving the Brand Industry
Traditional trademarks mainly consisted of two-dimensional marks, be it word, logo, figurative mark, or a combination of the above. All the above typologies had to be able to be represented graphically. The elimination of the graphical representation requirement from the definition of EU and national trademark laws is one of the key changes brought by the new Directive, as it paves the way for the acceptance of new types of trademarks and new means of representation.
A motion mark is essentially a trademark associated with some specific movement. Examples of what might qualify include The Winged Horse that leaps off the screen in a Tri-Star film and the golden arches of McDonalds that might be produced in hologram format or have some flickering / motion effect. A current example can be seen here:
It is our opinion that traditional trademark rules are heading for a relaxation of implementation when it comes to the future of brand communication. New typologies need to be embraced and accepted. The change in legislation has been long due, with the validity of protecting non-traditional trademarks being questioned in jurisprudence since the inception of the internet and the dimensions it brought with it. The ultimate goal of these new EU and domestic laws was to achieve a strengthening of the trademark discipline at all levels, whilst focusing on being nimble in today’s ever-changing interactive society.
