So you think you can move? – Trade marks in motion

motion mark
08 Nov 2019

In the not too distant future, brands will come to life in that the golden arches of McDonalds will probably be in hologram format or will have some flickering or other motion effect. The well-known Facebook logo will incorporate a futuristic motion together with a newly created sound and the Coca-Cola can will change colours as you enjoy your fizzy drink. It seems that we will have to loosen up our hips when it comes to the future of brand communication as there will be a lot of movement involved.

Brands currently communicate in a very static way, for example, the famous Nike Swoosh logo appears stationary on all brand communication (advertisements, etc.) and obviously on all Nike’s products. One could say that the Swoosh logo still has two left feet at this stage of its dancing development. But soon, it will cha-cha its way into our lives in that when buying Nike’s new running shoes, the Nike Swoosh logo will light up or have some animated effect as you run faster which is also how it will reflect on all forms of electronic communication. Brands are finding new ways to interact with customers and thanks to technology, and the fact that the average smartphone user spends approximately 3 hours staring at his/her smartphone per day, brands are communicating and engaging with audiences by way of multimedia (i.e. motion marks/movements, sounds, etc.)

Not only will brands need to work on their marketing “moves” but they will also need to adapt their strategy of protecting their intellectual property as marks incorporating motion and/or sounds are eligible for trade mark protection. A trade mark is a sign that is capable of distinguishing the goods/services in relation to which it is used from similar goods/services belonging to a different person. As such (back to the Nike example), in addition to it using its current stationary Swoosh logo to differentiate its goods, Nike may also use an animated Swoosh logo to differentiate its goods from its competitors’ in the market place. Consumers are no longer relying exclusively on “standard” brand identifiers like words, names, logos or slogans to identify the source of the goods/services it buys. Consumers now experience (hear, see, smell and feel) products and services in many ways which are all capable of identifying the source of the goods or services. As such, if the Swoosh logo has a specific animation to it, consumers will not only be able to identify the goods as being original Nike goods due to the static Swoosh mark but also through the specific animation used. It is therefore of great importance that brands be made aware of the fact that this specific animation/motion should be protected by way of filing a trade mark application to prevent third parties from using a similar animation/motion in relation to similar goods as it may tarnish a brand’s reputation.

When it comes to recording your “move” on the South Africa trade mark register, it has to be capable of being graphically represented. But how would one graphically represent a multimedia or motion mark? Fortunately our definition of a “mark” is broad enough to encompass trade marks such as holograms, motion and multimedia marks and the Registrar of trade marks issued guidelines in which it states that when filing a non-traditional mark and for it to satisfy the “graphic representation” requirement, an applicant may file the mark as a series of still images of the mark together with a detailed description explaining the movement of the mark. Practically, this does create some obstacles including that one would find it difficult to experience the true nature of the mark by looking at still images. I hope to see the trade mark register incorporating technology to enable the public to view all motion marks in full action.

Other territories ready to make big moves include the EU countries. The EU authorities have recently made amendments to the EU Trade Marks Directive by eliminating the graphical representation requirement upon filing a trade mark application. As such, once a brand has created a new “move”, it can dance its way onto the trade mark register by simply submitting a file in graphical format that reflects the motion and/or sound of the mark without having to explain the movement of the mark in detail. This will result in such marks being adequately represented on the register and easier and more accurate to prosecute and/or possibly enforce. I anticipate South Africa and all other territories moving toward the EU’s approach in that it, well…makes sense.

If you think that your brand has what it takes to move and you wish to prevent others from using your proprietary moves, be sure to slide into my inbox and together we will ensure that your brand dances its way onto the trade mark register.

Happy dancing.

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(This article is provided for informational purposes only and not for the purpose of providing legal advice. For more information on the topic, please contact the author/s or the relevant provider.)
Ruan Dickinson

Ruan Dickinson is an attorney in KISCH IP's Trade Mark Department. He specialises in trade mark prosecution, queries and administration. Read more about Ruan Dickinson


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