The information of what a trademark is and what is its legal definition was already presented to the readers in the previous parts of this series.Now the focus will be on one more type of unconventional trademarks (apart from the most common ones, such as word, word-figurative or figurative marks) – namely, a motion trademark.
A motion trademark is a mark which consists of a particular movement, or a change in the position of elements of the mark, or which turns into such movement or such change of position of elements.
The term ”consists of” means that apart from the movement itself, the mark may also include words, graphic elements or animated characters.
A motion trademark shall be presented in the form of a video file, or by means of a series of sequential still images showing the movement or the change of position. If still images are used to demonstrate the mark, they should be numbered or presented along with a description explaining their sequence.
The acceptable file format for presenting a motion trademark is MP4 and the size of the file should not exceed 50MB.
Upon filing an electronic application for registration of a motion trademark, the file presenting it can simply be attached to the application. If the application is filled traditionally in paper form, the file presenting the mark has to be attached to it on the appropriate carrier, such as a pendrive, CD or DVD.
If the motion mark is presented by means of a series of sequential images, there is no limitation as to the number of images, however it is essential to remember the following:
- If the mark is filed electronically – the images must be presented in one JPG file, on one page;
- If the application is filed traditionally in paper form – the images must be presented in the application on one print, with the size not smaller than 8 by 8 cm, and not exceeding 10 by 10 cm, or upon one A4 sheet.
The images have to be numbered, or presented along with a description explaining their sequence. The description of the mark in the application has to be consistent with the attached representation and should not exceed the scope of representation. If the mark includes some colors, they should also be mentioned in the description.
Below there are a few examples of trademarks registered or applied for registration in the EUIPO and the Polish Patent Office:
EUTM-017586521 registered in the name of Telia Company AB from Sweden for goods and services in classes 09, 35, 36, 37, 38, 41, 42, 45, including among others:
“Answering machines; Communications equipment; Business management; Business administration; Services for debiting and crediting financial accounts; Assembly, Installation, Maintenance, Servicing and Repair of installations and equipment in the field of data and telecommunications and communications networks; Email services; Transmission and reception (transmission) of database information via the telecommunications network; Entertainment; Leasing of recordings of sound and images; Leasing of radio and television programs; Scientific and industrial research; Computer programming; Technical research; Security services for the protection of property and individuals; Security services for buildings.”
EUTM-017286295 registered in the name of Ports Group AB from Sweden and destined for services in classes 35, 42, 45, such as:
“Consultancy services regarding business strategies; Strategic business planning; IT services relating to management of domain names, domain name servers, websites, trademarks, mail hosting and server hosting for customers; Trademark watch services; Alternative dispute resolution services; Monitoring intellectual property rights for legal advisory purposes; Trademark watch services for legal advisory purposes; Registration of Domain names [legal services].”
EUTM-017952705 registered in the name of ENEL S.p.A. from Italy and destined for goods and services from classes 04, 07, 09, 11, 12, 35, 36, 37, 38, 39, 40, 41, 42, including among others:
„Fuels and illuminants; Electric alternators for machines; Electronic starters for engines; Steam boilers [parts of machines]; Accumulators, electric; Electric batteries for vehicles; Electrical adapters; Power adapters; Boilers; Gas boilers; Boilers, other than parts of machines; Domestic boilers; Electric boilers; Industrial boilers; Electric candles; Electric cars; Office functions; Organization of trade fairs for commercial or advertising purposes; Arranging of trading transactions and commercial contracts; Arranging of contracts, for others, for the providing of services; Agencies for collecting gas utility payments; Agencies for collecting electric power utility payments; Agencies for collecting gas or electric power utility payments; Application of sheathing to cables; News agencies; Storage of electricity; Consultancy relating to the recycling of waste and trash; Sporting and cultural activities; providing information about the design and development of computer software, systems and networks; Greenhouse gas emission measuring and analysis; Monitoring of contaminated land for gas; Design of electric circuit boards; Design of storage systems.”
R.287049 registered in the Polish Patent Office in the name of The Procter & Gamble Company from USA and destined for goods in class 03: “Washing preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; preparations for maintaining, protecting and improving the look of fabrics; softening preparations for fabrics; strengthening preparations for fabrics; soaps for household use.”
EUTM-003429909 applied by Nokia Corporation from Finland and destined for goods and services in classes: 09, 28, 38, 41, including – among others – apparatus for recording, transmission and reproduction of sound and images, games and playthings; telecommunication services; education services.
A Polish trademark application no. Z.503050 filed by FABRYKA FUTBOLU SPÓŁKA Z OGRANICZONĄ ODPOWIEDZIALNOŚCIĄ I WSPÓLNICY SPÓŁKA KOMANDYTOWA from Poznań [the agent of a Polish football player – Krzysztof Piątek; the applied mark represents the famous gesture, which the player demonstrates to celebrate scoring a goal], destined for goods and services in classes 9, 35, 36, 38, 41, including among others the following:
„Computer databases; music, movies and other kinds of image and text electronic publications recorded on carriers; software; gaming software; production of advertising materials and advertisements, distribution of advertising, marketing and promotional materials, advertising services, marketing and promotional services, marketing campaigns, sponsoring sport activities; telecommunication services; mobile telecommunication services; organization of games and competitions; conducting competitions in the Internet; Internet games; provision of games online; organization of events and competitions connected with sport.”
Motion trademarks – as any other kinds of marks – are put to examination by the Polish Patent Office in order to check whether there exist any potential obstacles to granting them the rights of protection.
Consequently, it is essential for the applicants to make sure that an average consumer will perceive the sequentially moving elements as a trademark, and that such mark includes the elements which are sufficiently distinctive to allow remembering it by means of one cognitive act.
The Polish Patent Office (PPO) or the European Union Intellectual Property Office (EUIPO), upon examining an application for a motion trademark, may refuse to grant it the right of protection, if:
- A motion trademark includes too many elements;
- A motion trademark – within its concept – includes the elements, which are inseparably connected with the product, for which it is intended, or it describes the properties of this product;
Therefore, if you have an idea for the marking of your goods or services with a motion trademark, but you are not 100% sure whether the mark is suitable for registration or it is sufficiently distinctive, to avoid any doubts it is recommendable to rely on assistance of a professional agent (patent attorney), for whom handling trademark application proceedings both before the Polish Patent Office and EUIPO is a daily routine.
If a motion trademark is not exactly what you want, why not apply for a hologram as a trademark?
This is going to be the topic of discussion in the next part of this series, which is coming soon.
