In the fast-paced world of multimedia, brands have increasingly assumed more and more sophisticated forms. Motion marks in particular proliferate on television and on Internet websites, and can be very effective branding tools. Their recognition by tech-wary trademark registration authorities, however, lags behind their immense popularity and importance. Practical advice on how to persuade examiners to accept them for protection is therefore badly needed.
Fortunately, a recent decision by OHIM's Second Board of Appeal has laid down some very useful guidelines on how to graphically represent a motion mark.
The Action Starts Here
In September 2009, Sony Ericsson Mobile Communications AB filed CTM application no. 8581977 for a motion mark consisting of twenty stills depicting a trailing ribbon with a liquid-like appearance (see below).
The application covered various goods in Class 9 and services in Classes 38 and 41. Sony filed the following description of the mark:
"The trade mark is an animated sequence consisting of 20 stills that make up the sequence which runs within a time frame of approximately 6 seconds. The sequence starts at the upper left still and runs left to right on each consecutive row. The sequence shows a coloured stream of liquid which flows across the screen against a white background. The stream of liquid ultimately flows around and into the interior of the sphere which allows the colour of the liquid to be seen."
In October 2009, the application was refused under Article 7(1)(a) CTMR. The graphic representation of the mark was not regarded as sufficiently clear since, in the examiner's view, it was not possible to grasp the movement from the images shown. The examiner considered, moreover, that the images did not show a clear and unambiguous sequence of movement, but rather isolated fragments which were not connected to one another.
Sony subsequently filed an alternative, far more detailed description, as follows:
"This is a motion mark in colour. The nature of the motion is that of a trailing ribbon with a liquid-like appearance (‘ribbon'). The ribbon flows around and ultimately into a sphere design (‘sphere'). The duration of the motion is approximately 6 seconds. The stills in the sequence are spaced approximately 0.3 seconds apart. The stills are evenly spaced from the beginning to end of sequence. The 1st still is the upper left still. The last still (20th) is the middle still in the bottom row. The stills follow a progression from left to right within each row, before moving down to the next row. The precise sequence of the stills is as follows: In the 1st still, the ribbon enters the frame in the upper edge of the frame and flows down the right edge of the frame, before flowing upward in the 2nd to 6th stills. During that phase of motion (in the 4th still) the end of the ribbon is shown, producing the effect of a trailing ribbon. In the 6th to 17th stills, the ribbon flows counter clockwise around the frame. From the 9th still onwards, the sphere immediately moves into the centre of the frame. The interior of the sphere is the same colour as the ribbon. The ribbon flows around the sphere. In the 14th still, the ribbon enters the sphere, as if being pulled inside. In the 15th to 17th stills, the ribbon disappears inside the sphere. In the 19th and 20th stills, the sphere moves toward the viewer, gaining in size and ending the motion."
This amended description was still not enough to convince the examiner that the motion mark had met the requirements of Article 7(1)(a).
Sony Moves On
On appeal, however, Sony persuaded the Second Board of Appeal to overturn the refusal, thus paving the way to protection for its motion mark. How it did that, and the comments of the Board, are instructive for others seeking to protect motion marks.
Notably, together with its appeal arguments, Sony submitted a further graphic representation of the mark in the form of a flipbook of the 20 still images. By flipping the pages rapidly, the motion of the mark could more easily be discerned.
In finding for Sony, the Second Board of Appeal noted that the public must be able to rely on the CTM Register to determine the subject-matter of the trade mark and the representation of the mark must be clear, precise, self-contained, easily accessible, intelligible, durable and objective (the requirements previously set out in the Sieckmann decision).
In this regard, the Board held that a graphic representation must enable the sign to be represented visually, particularly by means of images, lines or characters, so that it can be precisely identified. The function of the requirement of graphic representation is in particular to define the mark itself in order to determine the precise scope of the protection afforded to the proprietor, so that economic operators are able to acquaint themselves, with clarity and precision, with registrations or applications made by their actual or potential competitors (Heidelberger Bauchemie).
In the view of the Board, when looking at the graphical representation in the form of the flipbook, any possible gaps in the progression of the movement between the stills disappeared and the flowing movement became clear. Anyone interested in the content of the mark could easily prepare a flipbook of their own and view the representation in this way. In the reality of the marketplace, the movement as shown by using the flipbook was actually how the mark was likely to be seen.
Even without looking at the flipbook, however, the Board considered that the combination of the stills and the textual description were sufficiently clear for the purpose of establishing the subject matter of the mark. A reasonably observant person with normal levels of perception and intelligence would, upon consulting the Register, be able to understand precisely what the mark consisted of.
Interestingly, in its appeal, Sony referred to two earlier third party motion marks, which had been accepted by the Office. These were CTM 8207532, a sequence of stills depicting a SNICKERS confectionery bar owned by Mars, Inc. and CTM 8553133, the red, green, yellow and blue moving logo owned by Microsoft Corporation. Whilst the Board confirmed that examiners are not bound by previous Office decisions, particularly as the number of registered motion marks is still very limited, in the present case it considered that much significance could be attributed to the above two registrations. Taking all this into account, the Board ruled that the refusal of Sony's motion mark application appeared inconsistent with OHIM's general practice and was based on an incorrect application of Article 4 and 7(1)(a). The Board therefore overturned the decision rejecting the mark.
This decision is good news for brand owners in this multimedia world.
As the Board highlighted, there are very few motion marks currently on the CTM Register, but there are in fact many in use, and the importance of multimedia communications in branding means that the use of moving images as branding tools is already widespread and is only likely to increase. The guidance in Sony on how businesses can protect such marks is therefore of great significance for brand owners, there is no reason why there should not be many more registered motion marks in the not too distant future.
This case demonstrates that the key to securing protection for motion marks is in ensuring that they are graphically represented to the necessary standard. Applicants for such marks should file a sufficient number of stills to clearly represent the flow of the movement, together with a precise and detailed textual description of the progression, thus leaving no doubt in OHIM's mind as to the content of the motion mark. It is also apparent from this ruling that filing a simple "flipbook" may also help an examiner to see how stills and text describe a movement. A flipbook should not replace a detailed stills and textual description, which form the actual graphic representation for eventual entry onto the Register, but could persuade an examiner that the stills and description submitted do indeed make sense. If Sony had filed a flipbook rather earlier on in the proceedings, one wonders whether the initial refusal would have been maintained. It is clear, though, that motion marks present special challenges, and it is sensible to prepare applications for them carefully to ensure that graphic representations comply with the formal and legal requirements, especially as no date of filing can be granted until an acceptable representation is filed. Sony shows that creativity and lateral thinking can be key in arriving at such a representation, and in persuading an examiner to see the mark as the applicant does. The relatively modest number of motion marks registered so far shows that it is still early days for the protection of marks in this category. However, with careful handling, resourcefulness and an eye to how examiners see things, brand owners and advisors may soon find that their efforts gather speed.
Finally, given the swift progress of technology on the Internet, it is to be hoped that in the not so distant future it will be possible to provide OHIM with an electronic version of a motion mark, so that the actual mark can be viewed, in motion, at the OHIM website. The earlier acceptance of sound bites by OHIM overcame the difficulty of protesting non-musical sounds, such as the Tarzan yell.