Registration of motion mark as trademark

Introduction

The registration of unusual trademarks is not a new phenomenon in India. It has, however,
generally been confined to certain sorts of unusual trademarks, such as colour and sound marks.
The law is still catching up to the new types of trademarks. A motion mark is an example of an
out-of-the-box design. With the renowned Columbia Pictures multimedia logo of ladies carrying a torch, the United States of America was the first country to file motion trademarks in 1996. Short movies,
animated clips, and still images or screenshots of each stage of a multimedia clip are all
acceptable forms for submission to the USTPO.

The goal of this article is to see if a motion mark qualifies for registration under the existing
Trade Marks Act of 1999.

Motion mark under trademark act

In India, the Motion Trademark appears to fall outside of Section 2(1)(zb) of the Trademark Act,
1999s definition of a trademark. The Act does not define a motion mark in any way. It is also
unmentioned in the proposed Trade Marks Manual. In general, a motion mark is one in which the
parts of the mark move or change position. It may be a one-minute video that explains things. It
might be a brief video clip with sound and moving visuals.

A trademark is defined in Section 2(1)(zb) of the Act as "...a mark capable of being represented
graphically and capable of identifying one persons products or services from those of others, and
may include the shape of items, their packaging, and combination of colours..." A mark also
comprises a device, trademark, heading, label, ticket, name, signature, word, letter, numeral,
form of products, packaging, or combination of colours or any combination thereof, according to
section 2(1)(m) of the Act.

The preceding clauses present the following two major concerns:
1. Is the preceding provision sufficiently wide to include a motion mark?

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

In Assam Roofing Ltd. and Ors. v. JSB Cement LLP and Ors ., a Single Judge Bench of the
High Court of Calcutta [Soumen Sen, J.] decided that Section 2(m) of the Act contains a
comprehensive meaning of mark; The Court';s opinion creates acceptable reasons for a motion mark to be regarded a mark under the Act, even though motion markings were not the subject of these cases.

In regards to the second issue, graphical representation is defined as the representation of a
trademark for goods or services depicted or capable of being represented in paper form,
including representation in digital form; under Rule 2(1) (k) of the Trade Marks Rules, 2017. 
As a result, in order to register a motion mark, all of the movement components of the mark must
be represented on paper. To be published in the Trademark Journal, the mark must also be
visually displayed.

Before being accepted for registration, the trademark must meet three criteria:

DISTINCTIVENESS:
The applicant must show that the trademark is unique. For motion trademarks, the usual need to
be able to differentiate its goods from those of others is greater. The applicants must provide
convincing proof of a trademark relationship with their name among the general public.

THE ORIGINAL SOURCE:

The true aim of a trademark is to identify the original source. In the
case of a motion trademark, the applicant must be able to demonstrate that the public knows the
trademark and associates it with specific goods or services through a multimedia clip. To pass
the stated criterion, recognition among the general public might be demonstrated using a poll.

FUNCTIONALITY:
Another crucial element for a trademark is its functionality. A motion trademark must be
functional, in the sense that it must be able to influence sales or generate profit for the brand via its usage. At the same time, the applicant cannot monopolise generic elements that are common
and important to all traders in the industry. 

Motion Mark Applications Made Till Date

Sony Ericsson filed a flipbook with up to 20 photographs that allowed the trademark examiner to
flip through the pages and watch how the pictures moved. The examiner first refused this
application, but it was later accepted on appeal. The Microsoft Windows logo, which we see when we start a Windows PC or laptop, is a well- known example of a registered motion mark.

The first motion trademark to be accepted in India was NOKIA CORPORATION famous
trademark CONNECTING HANDS via application number 1246341 in 2003, however it was
accepted as a device trademark with several screenshots/still pictures exhibiting step-by-step
motions.

Following its successful registration in the United Kingdom as the first motion trademark,
TOSHIBA recently submitted for registration in India with the application number 4093005.
Surprisingly, the registrar first opposed the trademark registration, arguing that motion
trademarks are not allowed in India, but the mark was eventually accepted.

costs, sales statistics, and the quality of the tools employed. However, a motion;s utility must not
put rivals at a disadvantage by preventing them from claiming broad market qualities; this form
of motion is known as aesthetically functional, and it diminishes market equitability.
The rationale behind the protection of trademark;Theres no denying that trademark applications for motion marks are on the rise across the world, including in India. For many years, motion mark applications were not allowed in India, but that changed with the publishing of the trademark handbook. In our technology age, the advantages of registering motion marks are enormous.

A static trademarks restriction is that it only covers a single picture, whereas a motion trademark
would protect several images contained in the motions. This strategy continuously broadens the
scope of protection and drastically raises the value of the trademarked brand.

Conclusion

The essential need for a proper portrayal of motion trademark is a combination of moving visuals
and sound to display the animation. As a result, it is reasonable to assert that the Trademark Act
of 1999 is becoming outdated as technology progresses. However, thus far, just a few motion
marks have been recorded. Several of India's contemporaries, including the United States and the
United Kingdom, as well as several Asian nations, have previously recognised a conventional
trademark and abolished the need for graphic depiction.

Acceptance of a motion mark opens up new commercial opportunities. Despite the fact that corporations have been utilising animations to connect with their consumers for a long time, animation can now be protected under Indian trademark law in the form of a motion mark. Motion marks are seldom registered as trademarks since they have only recently gained relevance as a result of technological advancements in this field.

References

https://www.intepat.com/blog/trademark/are-motion-trade-marks-protected/
https://www.jainandpartners.com/blog/details/motion-trademark/29
https://www.barandbench.com/apprentice-lawyer/motion-trademarks-the-new-age-brands