Opinion

Moving logos may not be covered by trademark protection

3 min read

26 August 2013

Dynamic use of logos and other aspects of corporate ID may be diluting brand owners’ trade mark rights and increasing the likelihood of infringement.

Brand development experts are increasingly opting to use animated versions of logos or other aspects of corporate identity for use in corporate video or other online content. The reasoning behind this is to communicate a distinctive and memorable brand personality.

However, it is not easy to obtain trade mark protection for such moving images and because of this, some brand owners may not be bothering to take this step. In other cases, brand owners may be wrongly assuming that their existing trade mark protection will cover the use of their logo in a moving image format too.

At the moment, it is extremely complicated to obtain a trade mark registration for a moving image, such as an animated logo. Both the UK Intellectual Property Office (UKIPO) and the Office of Harmonisation for the Internal Market (OHIM), which processes applications for Community Trade Marks, require applications to be made in a paper-based, 2D format, which means multiple stills of moving images need to be submitted.

When trying to obtain a registration for a moving or animated image, it is not unusual to submit as many as 80 to 100 stills to ensure a view of the image from every possible perspective is provided. It can be done, but it is costly and extremely difficult, which means some brand owners are being put off from applying.

Despite the difficulties, some prominent brands are successfully obtaining trade mark protection for moving images, recognising its importance in terms of protecting its presence online, on websites and in social media content. For example, BT’s revolving logo and Microsoft’s pulsating Windows logo are both protected by Community Trade Marks.

The systems currently used to process registrations by the UKIPO and OHIM are out of date. But draft legislation to modernise the European trade mark system includes a proposal to relax the requirement to include a graphical representation of the logo or mark as part of any application for trade mark protection. If the proposals are passed into law, hopefully by April 2014, it could soon be possible to submit moving images or 3D marks in e-format.

The systems currently used to process registrations at a national and European level are archaic and urgently need updating. For this reason, the draft proposal to relax requirements relating to moving images or logos is very welcome.

In the meantime, brand owners innovating new, dynamic applications for their corporate ID need to be aware that without trade mark protection any moving images could be copied by rivals, eroding the brand’s goodwill and reputation. While it is currently possible to obtain trade mark protection from OHIM for moving images, it is likely to take longer and require more documentation than other registrations.

Tania Clark is a partner and trade mark attorney at Withers & Rogers.

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