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New trade marks: sound, motion and others!

Date: 18 October 2019

 

On 3 May 2019, the UK’s first ever motion mark was registered by the Japanese electronic and communication company Toshiba. The ability to register motion marks was facilitated by the change in the requirements for non-traditional marks under the Trade Marks Directive (EU) 2015/2436 (the TMD).

 

As discussed in last autumn’s Make Your Mark newsletter, the UK’s implementation of the Trade Mark Directive saw the removal of the requirement for graphical representation in trade mark filings: UK implementation of the New TMD

 

The new test is that a UKTM should be represented on the register so as to allow parties to determine the clear and precise subject matter of the protection. This change in legislation has opened the doors for sound clips, motion, multimedia and holograms to be registered as UKTMs in a wide range of digital file formats. As a result, Toshiba was able to register its one second long video of its company logo zooming out, surrounded by appearing and disappearing Origami-style folding coloured polygons, as a motion mark.

 

Although the UK Trade Marks Act 1994 does not specify mention motion, multimedia or holograms, it is possible to file them as UKTMs. The summary below reflects information in the “Common Communication on the representation of new types of trade marks” published by the EUIPO, European Commission and national offices and updated by the UKIPO to reflect the electronic file formats deemed acceptable:

 

Type of TM

Definition

Means of Representation

Electronic file format accepted by EUIPO

Sound

A trade mark consisting exclusively of a sound or combination of sounds.

The mark shall be represented by submitting an audio file reproducing the sound or by an accurate representation of the sound in musical notation.

JPEG

MP3

Motion

A trade mark consisting of, or extending to, a movement or a change in the position of the elements of the mark.

The mark shall be represented by submitting a video file or by a series of sequential still images showing the movement or change of position. Where still images are used, they may be numbered or accompanied by a description explaining the sequence.

JPEG

MP4

Multimedia

A trade mark consisting of, or extending to, the combination of image and sound.

The mark shall be represented by submitting an audio-visual file containing the combination of the image and the sound.

MP4

Hologram

A trade mark consisting of elements with holographic characteristics.

The mark shall be represented by submitting a video file or a graphic or photographic representation containing the views which are necessary to sufficiently identify the holographic effect in its entirety.

JPEG

MP4

 

 

Sound, motion, multimedia and hologram marks can now be registered at both the EUIPO and UKIPO. To date, there has not exactly been a rush of companies registering non-traditional marks and it remains to be seen if the Sieckmann criteria will in fact limit future possibilities.  Nevertheless, these types of trade marks are now becoming more accessible, and brand owners wishing to protect their valuable intellectual property should seek to obtain trade mark protection for all key brand identifiers (including word marks, logos and other figurative marks, sound marks, motion marks, colours, smells and perhaps other non- traditional marks).

 

Please contact Maucher Jenkins Partner Katie Cameron if you would like further information.

 

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