The evolution of trademark law has paved the way for new forms of protection for distinctive signs, including motion marks. Introduced into the European system in 2017, motion marks offer interesting opportunities for protection, but also entail significant practical challenges, particularly with regard to the requirement of distinctiveness. This article examines the relevant legal framework and EUIPO practice, focusing on the main critical issues and possible registration strategies.
Index:
- Motion marks in the European system
- Registration challenges and the requirement of distinctiveness
- A practical case and EUIPO decision-making practice
- Strategia di tutela e considerazioni conclusive
Protection strategies and concluding remarks
The category of motion marks was introduced with the 2017 reform of the European Union Trade Mark Regulation (EUTMR). These are marks consisting of, or including, a movement or a change in the position of the elements constituting the mark.
The definition (see Article 3(3)(h) EUTMR) does not limit motion marks to signs consisting solely of movement: a sign may also qualify as a motion mark where it shows a change in the position of its elements (for example, a sequence of static images).
Motion marks must be represented by filing:
- a video file showing the movement or change in position; or
- a sequence of static images illustrating the movement.
The images may be numbered or accompanied by a descriptive explanation of the sequence.
Registration challenges and the requirement of distinctiveness
Obtaining registration for a motion mark remains far from straightforward, as demonstrated by a recent provisional refusal issued by the EUIPO on 8 October of this year in relation to the EU designation of International Registration No. 1858177. 1858177.
The main obstacle lies in the strict application of the fundamental requirement of distinctiveness (original character), as provided for under both Italian and European trademark law (as well as under all comparable legal frameworks). A motion mark is registrable only if the relevant consumer is able to perceive the animated sequence as an indication of the commercial origin of the goods or services, rather than as a mere embellishment, visual effect, or functional/instructional element.
A practical case and EUIPO decision-making practice
In the case at issue, the gestures depicted were considered likely to be perceived by the relevant public merely as instructions for the use of the goods claimed (namely, medical thermometers and scanners).
In other decisions addressing the same issue, the EUIPO has expressly emphasized that it is not sufficient for a movement to be original; it must also be capable of fulfilling the essential function of a trademark, namely identifying the commercial origin of the goods or services.
Where the sequence of images forming a motion mark application can be used by any operator in the relevant sector—for instance as a standard animation, a technical gesture, or a generic graphic effect—the application is generally refused.
Strategia di tutela e considerazioni conclusive
In this context, it is crucial to adopt a clear and well-structured protection strategy, possibly by supplementing the motion mark application with evidence of prior use capable of demonstrating acquired distinctiveness.
Motion marks therefore represent a potentially valuable tool, but in practice one that is particularly complex to design and register. They require careful planning, a thorough assessment of distinctiveness requirements, and an effective method of representation.
To maximize the chances of success, it is, as always, advisable to rely on the assistance of professionals experienced in industrial property law.