The importance of non-traditional trade marks in the digital age

12 Nov 2019

The digital era has brought about several advancements in everyday life. One of the most notable of these is the advancement in the field of technology which has changed the way businesses communicate with consumers.

These changes can also be found within the law of trade marks. In particular, the Trade Marks Act now makes provision for the registration of non-traditional trade marks such as sound, motion, smell, taste, texture, gesture, position, shape, configuration, pattern, ornamentation, colour or container for goods or a combination of these. This allows a trade mark owner to communicate its brand in the manner in which it was intended and will be perceived by its consumers, as such connecting with them better, and to protect this means of brand communication.

The South African Trade Marks Act defines a mark as any sign which is capable of graphic representation; this now includes the filing of non-traditional trade marks. In this regard, the Registrar of Trade Marks has updated its examination guidelines to set out how one can meet the requirement for the graphic representation of a non-traditional trade mark.

The main requirement for filing applications for non-traditional trade marks is that the representation of the trade mark must be clear, precise, self-contained, easily accessible, intelligible, durable and objective.

While the Trade Marks Act allows for the registration of non-traditional trade marks, it appears as though South African trade mark owners are yet to catch onto this exciting trend. To date, for instance, the Trade Marks Register indicates that only one motion trade mark has been successfully registered in South Africa.

In the case of motion trade marks, the trade mark owner would have to submit a multimedia file of the motion trade mark and various images to depict how the motion trade mark will look and include a description of the elements in respect of which protection is claimed.

The trend of non-traditional trade marks seems to be growing in popularity in the international community. For example, the UK Intellectual Property Office granted its first multimedia motion trade mark to Toshiba. This trade mark is represented as the Toshiba logo accompanied by a one second sound clip.

Trade mark owners in the UK can also make use of multimedia files to obtain registration of other non-traditional trade marks such as holograms, multimedia, motion and sound marks.

Furthermore, there have been approximately fifty non-traditional trade marks filed, to date, in the European Union Intellectual Property office.

In the time of social media, YouTube and the popularity of music and movie apps, trade mark owners should market their brands to consumers in a manner that is current, vibrant and memorable. An advantage of using and registering non-traditional trade marks such as motion marks is that a trade mark owner is able to share the experience of its brand with its consumers.

To find out more on how to keep up with the times and file a non-traditional trade mark, in a simple and easy way, contact KISCH IP.

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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.)
Luyanda Ntuli

Luyanda Ntuli is an attorney in KISCH IP's Trade Mark Department. Read more about Luyanda Ntuli


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