Trade Marks

Trade Mark Registration Enters The Realm Of Moving Pictures (Films)

November 17, 2011

Moving pictures (films), since they entered our lives in the 1890’s, have had a tremendous impact upon us. Whilst trade mark registrations have been slow to protect moving images, this is now changing.

However whilst trade mark registration predated the coming of moving pictures, the protection of moving images as trade marks has lagged behind developments on the silver screen. Static 2D marks have always been protectable, and 3D marks became protectable in the UK under the 1994 Trade Marks Act. The first United Kingdom gesture trade mark registration, filed in the name of the Derbyshire Building Society (by Swindell and Pearson!) and featuring “...tapping of the side of the nose with an extended finger...”, was not filed until 1995. However, following a recent decision of the Community Trade Marks Boards of Appeal (R-443/2010) it is now possible to protect as registered trade marks movement marks, i.e. trade marks made up of a number of stills which when viewed in sequence form a moving image. The protection of movement marks at the Community Trade Mark Registry is at present in its infancy. However it appears to be clear that prior to filing, the representation of the movement mark to be protected must be considered very carefully as must the description of the mark, the filing of which is considered compulsory. The movement mark as filed with the appropriate description must leave the notional reasonably observant and normally intelligent and perceptive person able to understand what the mark means when consulting the trade mark register without spending tremendous effort and thought on the process. The confirmation of the registrability of movement trade marks at the Community Trade Mark level is to be seen positively. It is therefore possible to have protection for movement trade marks with a single registration which covers the whole of the European Union. Given the importance of movement in advertising and particularly on the internet, and given that movement trade mark registrations go towards protecting the look and feel of a brand as it is used, this development must be welcomed as a positive outcome for brand owners. Please contact Kieron Taylor for more details [email protected] or your usual trade mark contact at Swindell & Pearson Ltd.

Swindell & Pearson has been helping businesses and individuals protect and defend their ideas, innovations and brands for over 130 years. With its head office in Derby, the firm also has offices in Stoke, Wolverhampton, Stafford, Sheffield and Burton. To find out how Swindell & Pearson can help you with any intellectual property requirements please get in touch via [email protected] or by telephone on 01332 367 051.