Motion marks
What will catch your eye first – a still graphic or a surface where the images move? The answer seems easy. Thanks to motion marks you can set yourself apart from other entrepreneurs and compete for customers' attention with confidence!
Motion marks are characteristic because they consist of, or extend to, a movement or a change in the position of the elements of the mark.
In order to register a trademark, it must be properly represented. Currently, this can involve: submitting a video file or submitting a series of sequential still images illustrating movement or change of position (numbered and/or including a description).
Motion marks – examples
Example no 1: “Castrol” trademark
Held by: CASTROL LIMITED
Number of exclusive right registered with the EUIPO: EUTM 017492513
The application was accompanied by a 3-second clip depicting the mark – the above captures i.a. the movement of the upper element and the appearance of the lower part of the sign (fade-in).
Example no 2: “Shape shape shape” trademark
Held by: MITSUI KAIYO KAIHATSU KABUSHIKI KAISHA (MODEC, INC.)
Number of exclusive right registered with the EUIPO: EUTM W1544247
The trademark is a moving trademark consisting of three figures showing the state of change of the mark over time; the numbers displayed in the lower right corner of each figure indicate the order of the figures, and are not elements consisting the trademark; the trademark changes in the order to figure 1 to figure 3;
In figure 1, a lower-case alphabetical letter "shape" and a blue equilateral triangle is displayed at the upper right of the "e";
In figure 2, the above-described blue equilateral triangle figure changes to black square figure;
In figure 3, the above-described black square figure changes to a rose pink circular figure;
this movement of the trademark is about 5 seconds in total.
Motion marks – beware!
Keep in mind that motion marks, like traditional marks, have to meet certain requirements to qualify for protection, including being distinctive. Otherwise you may face refusal of registration!
Denial of protection for a mark depicting a stream of water coming out of a tap
Applicant: Altered Stockholm AB (EUTM 018254994)
Class of goods/services: 11 (fittings for bathrooms, mixer taps, sink sprayers, showers etc.)
Grounds for refusal: art. 7(1)(b) of the European Union trademark Regulation – the mark will not be perceived as an indication of the commercial origin of goods
Sound marks
Have you ever heard a specific sound and immediately thought of a particular entrepreneur or product? In the age of ubiquitous and constant visual stimuli, building brand recognition based on acoustic association can be much more effective!
Sound marks consist exclusively of a sound or combination of sounds. In the registration process, the mark is represented by submitting:
· an audio file or
· an accurate representation of the sound in musical notation.
Sound marks – examples
Example no 1
Held by: ING Bank N.V.
Number of exclusive right registered with the EUIPO: EUTM 018311343
The application was accompanied by o 5 seconds long audio file.
Example no 2: “I’m lovin’ it” trademark
Held by: McDonald's International Property Company, Ltd.
Number of exclusive right registered with the EUIPO: EUTM 003661907
Example no 3: Twentieth Century Fox Film Corporation
Held by: Twentieth Century Fox Film Corporation
Number of exclusive right registered with the EUIPO: EUTM 001312008
The mark consists of a musical theme, represented in musical notation, which can be played on its own or with orchestration.
Sound marks – beware!
With regard to sound marks it is also of particular importance that the general requirements for trademark registration are met. An applied-for mark may ultimately e.g. turn out to be non-distinctive for various reasons!
Denial of protection
Example no 1
Denial of protection for a mark consisting of the sound of a can being opened, pause and of the sound of fizzing bubbles (15 sec. total).
Applicant: Ardagh Metal Beverage Holdings GmbH & Co. KG (EUTM 017912475)
Class of goods/services: 6 (metal containers etc.), 29 (milk-based drinks etc.), 30 (coffee, cocoa or tee-based beverages etc.), 32 (beer, water, other beverages) and 33 (alcoholic beverages other than beer)
Grounds for refusal: art. 7(1)(b) of the European Union trademark Regulation – the applied-for mark will be perceived by the relevant public as a functional element of the goods at issue because the fizzing sound indicates to them the qualities of those goods and not their commercial origin.
Example no 2
Denial of protection for a sound mark consisting of a melody with whistling and clapping noises (40 sec. total).
Applicant: NOWO COMMUNICATIONS, S.A. [EUTM 017277864]
Class of goods/services: 9 (electronic communication devics etc.) and 38 (electronic communication services etc.)
Grounds for refusal: art. 7(1)(b) of the European Union trademark Regulation – the applied-for mark does not qualify for registration.
Motion and sound marks – summary
Motion and sound marks can make you memorable to your audience in a unique way. They greatly complement and strengthen each trademark portfolio.
The right strategy and due care at the registration stage allow for utilising their full potential!
Have more questions? Contact the author!
Maciej Majewski
Attorney-at-law, Senior Associate