Whether Motion Trademarks Can Be Registered?

In today’s technology-driven era, businesses are rapidly using unconventional trademarks in addition to conventional ones for the sake of their marketing growth. Nevertheless, the use of unusual trademarks such as colour and sound marks has been mostly limited to specific types of trademarks. In India, applying for the registration of unconventional trademarks is not a new idea. Surprisingly, the law is still trying to catch up to the latest types of trademarks. A motion mark is an example of an unconventional trademark.

For unversed, in 1996, the United States of America became the first nation in the world to register a motion trademark, which was the well-known Columbia Pictures Multimedia Logo of women holding a torch. The United States Patent and Trademark Office, known as USTPO, accepts submissions in a variety of formats such as short videos, animated clips, and still photos or screenshots of each phase of a multimedia clip.

What is a Motion Trademark?

In general, a motion mark is one in which the elements of the mark move or change position. It could be a one-minute video that explains something. Apart from that, it could be a brief video clip with sound and moving visuals.

Now understand the position under the Indian law

What does the Trademark Act, 1999 says?

The motion trademark appears to fall outside of the definition of trademark provided under Section 2 (1) (zb) of the Trademark Act, 1999, hereinafter referred to as Act. The Act does not define a motion mark in any way. The draft manual for Trademark is also silent about it. As per the definition of Trademark given in Section 2 (1) (zb) of the Act, “Trademark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging, and combination of colours….” Moreover, Section 2 (1) (m) of the Act states that a “Mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof.”

From the perusal of the aforesaid provisions, two basic questions come into mind, which is enumerated below: –

1. Whether current provisions broad enough to cover a motion mark?

2. Is it possible to represent a motion mark graphically?

The judicial pronouncements come into aid to get these queries answered. Regarding the first issue, in Single Bench Judgement of the High Court of Calcutta in the case titled Assam Roofing Ltd and Ors. Vs JSB Cement LLP and Ors, AIR 2016 Cal 41, observed that Section 2 (m) of the Act gives an inclusive definition of the mark. Although a motion mark was not the subject of this decision, the Court’s view sets up rational grounds for a motion mark to be considered a ‘mark’ under the Act.

Now comes to second proposition, Rule 2 (1) (k) of the Trademark Rules, 2017, which defines “graphical representation” as the representation of a trademark for goods or services represented or capable of being represented in paper form and includes representation in digital form.” Therefore, to register a motion mark, all of the mark’s movement aspects must be represented in a paper form.

Notably, the first motion trademark accepted in India was Nokia Corporation’s renowned trademark “CONNECTING HANDS” in 2003, however; it was accepted as a device trademark in which many screenshots or still photographs demonstrating step-by-step motions were exhibited.

Recently, in 2019, TOSHIBA applied for registration in India, after its successful registration as the motion trademark in the UK. Unexpectedly, the trademark registry at first objected to the trademark registration, stating that motion trademarks are not allowed in India, but eventually accepted the mark.

To sum up, a combination of moving visuals and sound is required for a proper portrayal of the motion trademark. Hence, it’s fair to say that the Trademark Act, 1999 is becoming outdated as technology improves. Only insignificant numbers of motion marks have been registered so far. On the contrary, other countries like the US, and the UK, as well as numerous Asian nations, have previously acknowledged the unusual trademarks and abridged the need for graphic display of trademarks.

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