20 September 2018Trademarks

Marques 2018: Motion marks and marching ducks

Non-traditional trademarks, including those for motions and flavours, were the subject of a panel discussion today at the 2018 Marques Annual Conference in Paris.

Although flavour marks are theoretically registrable in the US, it is “extremely difficult” to obtain one due to the functionality requirements, said Red Horowitz, partner at BakerHostetler.

Horowitz explained that taste is not inherently distinctive, and it is very often considered to be a characteristic of the products covered.

For example, in 2013, the Trademark Trial and Appeal Board determined that a pharmaceutical company’s application to register a peppermint flavour for formulations of nitroglycerin (often used to treat chest pain) failed at the functionality hurdle.

As medication generally has an unpleasant taste, giving it a different and more agreeable flavour serves a functional purpose, preventing its registration as a trademark, Horowitz explained.

Another type of non-traditional trademark is the motion mark, which Horowitz believes is particularly interesting as such marks are often depicted statically in applications.

For example, the ‘Duck March’ application (US number 2,710,415), by Peabody Hotels, was accompanied by a lengthy description, a videotape showing footage of the ‘Duck March’ motion mark in its entirety, and a drawing depicting a single point of movement in the mark.

The original Peabody Hotel in Memphis became famous for its ‘marching ducks’ which, at 11am every day, are led by the ‘Duckmaster’ from the rooftop to the hotel lobby. The ducks then march to a marble fountain, where they stay until 5pm, and the routine is reversed.

Peabody uses imagery and videos of the famous duck march to advertise its brand and facilities, and sought to protect the movement of the march itself.

Horowitz explained that for motion marks in the US, the applicant should submit a drawing which shows a single point of movement or a drawing with five freeze frames depicting the various points in the movement; whichever best depicts the commercial impression of the mark.

He added that Peabody was required to submit specimens of use recently. The hotel submitted 35 internet screenshots showing the moving mark in practice, in the context of hotel facilities, which sufficed.

According to Kasper Frahm, partner at Plesner, who also spoke during the session, multimedia marks can sometimes be too long to work as a trademark. However, he acknowledged that it is impossible to set a universally accepted limit.

Nevertheless, “for me, at some point, it stops functioning as a trademark”, Frahm said.

He added that such a lengthy mark is surely difficult to enforce, and also, with so much information contained within one mark, it can be difficult for members of the public to comprehend what exactly the mark covers.

Horowitz warned that non-traditional mark applicants cannot afford to forget that descriptions of the applied-for mark must be “extremely precise”, to ensure the best chance of success.

Where a drawing is relevant to the application, for example for motion trademarks, these must also be exact, according to Horowitz.

Roland Mallinson, partner at Taylor Wessing; Dimitris Botis, deputy director of international cooperation and legal affairs at the European Union Intellectual Property Office (EUIPO); and Irene Marugan, project manager at the EUIPO, joined Horowitz and Frahm on the panel.

The 2018 Marques Annual Conference is taking place between Wednesday, September 19, and Friday, September 21, in Paris.

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