South Africa: Motion Trade Marks, Multimedia Files And Keeping Up

Last Updated: 15 August 2019
Article by Ferosa-Fae Hassan
Most Read Contributor in South Africa, September 2019

We have, on many occasions, discussed the fact that a trade mark does not need to be a word or a logo. A trade mark can be a whole range of things – a slogan, a shape, a sound, a scent, a gesture, a colour combination, trade dress...

A trade mark needn't even be static, it can be something that moves. The concept of a motion mark has been around for some time. South African readers will be aware that quite a few years ago, Sasol started using a moving logo comprising molecules. A problem with motion marks is finding a way of representing them adequately for trade mark registration purposes. One possibility might be to submit a series of images showing the different stages of the movement, together with a written description. But it's debatable whether that really gets across what the motion mark comprises.

But things are changing, thanks to multimedia files. Multimedia files make the registration of motion marks much easier. The UK trade mark registry, the United Kingdom Intellectual Property Office ("UKIPO"), recently announced that it had granted its first motion multimedia mark, one that belongs to Toshiba. A UKIPO spokesman said this: "Under the amended trademark law, submission of motion marks, holograms trademarks and sound marks via multimedia format now enables examiners to see exactly what the creator of the mark intended." Before proceeding (with some hyperbole) to describe this registration as a "landmark legal moment that will feature in the timeline of UK trademark history."

But this is actually quite a big deal. Consider for a moment that many years ago British Telecom protected a rotating globe logo by way of a registration that consisted of 286 images of the sequence, together with a lengthy explanation of what the trade mark actually was. Far from ideal!

It is important to bear in mind that the mere fact that something is technically possible doesn't mean it will be easy. Motion marks may be registrable, but distinctiveness remains a requirement and there is always a certain amount of registry suspicion about newfangled marks.

But it is almost certain that motion marks are likely to become increasingly relevant. As the UKIPO spokesman said, "trademarks are likely to become increasingly innovative in the digital age, as organisations explore imaginative ways of reflecting their distinctive brand personalities using creative IP." A representative for the registrant, Toshiba, said this in near perfect corporate-speak: "Our communication strategy is a content centric, digital first strategy, and because of this, we believed that it was essential to trademark all aspects of the brand including our motion mark."

There are, of course, very good reasons why companies will start adopting more motion marks. One is that it makes perfect sense to have such marks in a world where customers increasingly interact with brands on screens. Another reason is a little more prosaic – as the trade mark registers of the world fill up, it is becoming increasingly difficult to find word (and even logo) marks that are available.

Moves to motion marks and multimedia registrations will pose new challenges in terms of searching, registering (certainly in countries where there's no scope for multimedia filing), proof of use (it will no longer be a case of keeping lever-arch files of advertisements), and proving infringement (establishing that the mark that is being used is confusingly similar to the registered motion mark).

So, what about South Africa? The South African Trade Marks Act, 1993 defines a "mark" as follows (our emphasis):

"Any sign capable of being represented graphically, including a device, name, signature, word, letter, numeral, shape, configuration, pattern, ornamentation, colour or container for goods or any combination of the aforementioned."

This definition is broad enough to encompass a range of non-traditional trade marks such as holograms, tastes, textures and even motion and multimedia marks.

As far as graphic representation goes for motion or multimedia marks, the South African Guidelines on the Examination of Trade Mark Applications lists the following methods as acceptable means to satisfy the requirement:

  • a series of still images of the mark;
  • a detailed written description explaining the movement of the mark;
  • specifics about the chronological order of the images including the sequence in a written description;
  • and an electronic file in analogue or digital format, together with a written description outlining the nature of the mark and describing the movement.

We have seen the Registry accept applications for non-traditional trade marks by way of multimedia files and it appears that more applications of this nature will continue to be filed in South Africa.

Clearly, trade mark laws and offices will need to adapt to cope with the new branding reality, as indeed will trade mark lawyers. Which leads us to another issue where lawyers may need to adapt.

It has become increasingly obvious that the blood-and-thunder trade mark infringement letters that lawyers fire out can backfire badly in today's media-obsessed world. This has led to a number of trade mark owners opting for a sweeter, more millennial approach. Two recent examples of this takes some beating.

A crowd called Super Happy Fun America arranged something called the Straight Pride Parade. It falsely suggested connections with two big brands, Netflix and Trip Advisor. Both dealt with this admirably. Netflix sent a letter saying that "our legal department is here, its queer and it's telling you to steer clear." Trip Advisor sent one reading "I'm coming Out ... we have become a well-known brand for our review of hotels, restaurant experiences and even the occasional YMCA, but we weren't Born This Way... we obtained our recognition through significant advertising and promotion."

Welcome to the new world of trade marks!

Reviewed by Manisha Bugwandeen-Doorasamy, an executive in ENSafrica's IP department.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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