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Article: Are Motion Trade Marks Protected?
Author: Hardik Choudhary
Introduction
In today’s fast-paced world, brands are not only represented by conventional forms of trademarks but are also increasingly using unconventional forms of trademarks. In India, the registration of unconventional trademarks is not new. However, it has been mainly restricted to certain kinds of unconventional trademarks such as colour marks and sound marks. The law is still catching up with newer types of trademarks. One such unconventional mark is a motion mark. This article aims to analyse whether a motion mark is registrable under the current scheme of the Trade Marks Act, 1999 (“the Act”).
Motion Marks under the TM Act
The Act does not exclusively define a motion mark. The draft Manual of Trade Marks is also silent on the issue. Generally, a motion mark can be understood as a mark which consists of a movement or change in the position of the elements of a mark. It can be a short clip combining both moving pictures and sound.
The Act under section 2(1)(zb) defines a trade mark as “…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…” Further, 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 colours or any combination thereof…”.
From the above provisions, the following two main issues arise:
1. Whether the above two provisions are broad enough to include a motion mark?; and
2. Whether a motion mark can be represented graphically?
Inclusive Definition of Trademark
With regards to the first issue, a Single Judge Bench [Soumen Sen, J.] of the High Court of Calcutta in Assam Roofing Ltd. and Ors. v. JSB Cement LLP and Ors. [AIR 2016 Cal 41] [1] held that “…Section 2(m) of the Act gives an inclusive definition of ‘mark’.”. Though motion marks were not the subject matter of these judgements, the interpretation by the Court provides reasonable grounds for the inclusion of a motion mark as a mark under the Act.
Graphical Representation of Motion Trademark
With regards to the second issue, the Trade Marks Rules, 2017 under Rule 2(1)(k) define 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 digitised form…”. Thereby, for registering a motion mark, all the moving elements in the mark must be capable of being represented in a paper form. Graphical representation is also required so that the mark can be published in the Trademark Journal.
However, this requirement makes the registration of a motion mark difficult. Since the correct representation of a motion mark includes the movement of the elements of the mark along with the sound, the same cannot be represented on paper entirely.
Motion Mark as Device Trademark
In India, the first motion mark to be filed was Nokia’s ‘CONNECTING HANDS’ mark under Registration No. 1246341 [2]. However, the Registry records show that the mark has been registered as a device mark rather than a motion mark. Probably owing to this reason, India did not see any applications for motion marks until recently.
Change in TM Registry’s View
In a recent instance, the Trade Marks Registry, Delhi, initially objected to an application by the Toshiba Corporation for its motion mark for ‘TOSHIBA’ (Application No. 4093005) [3] by stating that “…motion marks are not accepted in India”. However, the Registry subsequently changed its position and the mark was accepted and has since been registered as a motion mark.
In other instances as well, the Trade Mark Registry has registered some motion marks (e.g. Registration No. 4192672 [4] and 4192678 [5]).
The Moving Elements of a Motion Mark
On a perusal of the above registrations, it can be seen that the marks that have been registered only include the graphical representation of the moving elements of the motion mark and not the motion mark in the true sense. The limited ability of graphical representation significantly restricts the protection of a motion mark.
Conclusion
The above discussion shows that despite the initial hesitancy in accepting motion marks, the Trademark Registry has now started to accept and register motion marks. Till the time a motion mark is capable of being represented graphically, it is eligible to be registered provided that the mark satisfies the other requirements of the Act. However, it can be seen that only a handful of motion marks are currently registered. The way forward should include the possibility of representation of such marks in multimedia formats such as MP4 files so as to remove the dependency of graphical representation alone. In the digital age, this will enable the better protection of a more comprehensive array of trademarks.
Endnotes
[1] Assam Roofing Ltd. and Ors. v. JSB Cement LLP and Ors. [AIR 2016 Cal 41], pg. 2, available at https://www.calcuttahighcourt.gov.in/Order-Judgment-PDF/O/CS_106_2015_09122015_J_217.pdf.
[2] Registration Certificate available at https://ipindiaonline.gov.in/eregister/showdocument.aspx?document_no=WFlaW1xdMCwvLCorKFhZWltcXQ==.
[3] Registration Certificate available at https://ipindiaonline.gov.in/eregister/showdocument.aspx?document_no=WFlaW1xdKS0wMCssLSpYWVpbXF0=.
[4] Registration Certificate available at https://ipindiaonline.gov.in/eregister/showdocument.aspx?document_no=WFlaW1xdKSsqKSgpKidYWVpbXF0=.
[5] Registration Certificate available at https://ipindiaonline.gov.in/eregister/showdocument.aspx?document_no=WFlaW1xdKSsqKTArJypYWVpbXF0=.
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