In January 2019, we flagged incoming changes to UK trade mark law – namely, the end of the requirement that a trade mark must be capable of graphic representation. This marks an opportunity for businesses seeking to expand their trade mark portfolio.

The aim of EU Directive 2015/2436 of 16 December 2015, on which the January 2019 amendments are founded, was to modernise and harmonise trade mark law across the EU. It allows these changes to trade mark law by stating that “a sign should […] be permitted to be represented in any appropriate form using generally available technology, and thus not necessarily by graphic means, as long as the representation offers satisfactory guarantees to that effect”.

The directive removed a major obstacle to the registration of non-standard trade marks and its implementation allows applicants to present their mark in a wider range of formats, for example it facilitates the registration of sounds and smells, and allows for ‘motion’ marks. The registration system continues to require that trade marks are capable of being represented in a manner which is clear, precise, self-contained, easily accessible, intelligible, durable and objective. All the other requirements for trade marks, namely that they be distinctive, non-descriptive and not misleading, also remain.

TOSHIBA, who filed their application for a motion mark on 14 February 2019, became the first organisation to have a motion mark registered in the UK under the new legislation on 3 May 2019.  You can see their mark here.

The assessment of whether a motion mark is “distinctive” is relatively uncharted territory and at first glance appears problematic. Taking TOSHIBA’s mark as an example, although the word mark element “TOSHIBA” is clearly distinctive, the elements of colour and animation in the motion mark may not bring TOSHIBA to mind. It is difficult to appreciate what the animation brings to the mark that a combination of traditional word and figurative marks could not.

There are obvious advantages to non-traditional trade marks, but to make the most of the opportunities presented by motion marks, applicants will need to show proof of imagination to avoid opposition of these marks, or challenges to their use.

If you are considering applying for a multimedia mark, you should take legal advice from a solicitor or trade mark attorney on the distinctiveness of your application and ways in which it may be strengthened.