The Trade Marks Registry has recently accepted a movement mark for registration in Hong Kong. Subject to any opposition being filed, we will see Hong Kong’s first registration for a movement mark in May 20161.
This will be the first registration for a movement mark since the Hong Kong Intellectual Property Department published a new chapter entitled “Movement marks and holograms” in its Work Manual on 3 January 2014.
Hong Kong’s Trade Marks Ordinance (Cap. 559) (“the Ordinance”) does not explicitly refer to either movement marks or holograms, so the chapter in the Registry’s Work Manual clarifies the position on the registrability of such non-traditional trade marks.
In this entry, we discuss briefly how applications for movement marks and holograms should be made in Hong Kong.
Section 3(1) of the Ordinance defines a “trade mark” to mean “any sign which is capable of distinguishing the goods or services of one undertaking from those of other undertakings and which is capable of being represented graphically.” Section 3(2) further specifies that “a trade mark may consist of words (including personal names), indications, designs, letters, characters, numerals, figurative elements, colours, sounds, smells, the shape of goods or their packaging and any combination of such signs“.
Rule 8(1) of the Trade Marks Rules requires the representation included with an application for registration of a trade mark to depict the trade mark clearly and in sufficient detail to permit a proper examination to be made of the trade mark and the representation shall be of a kind and quality that is suitable for reproduction and registration.
Traditionally, representations for non-traditional trade marks which are specifically referenced in the Ordinance (i.e. colours, sounds, smells, shapes) take the form of a visual representation along with a written description of what is claimed. The Registry requires the same for movement marks and holograms, and in the case of movement marks, additional information on the sequence of movement.
The recently published application for a movement mark was made with a representation consisting of 50 still frames from the movement / animation, accompanied with the following written description:
“The mark is a movement mark consisting of a representation of 50 images in the sequence of movement from Frames 1 to 50 that lasts 10 seconds in total. The starting point is an orange triangle that multiplies to show an increasing number of orange and grey triangles and triangular arrow devices which start to overlap (Frames 1 through to 15); the triangles/arrow devices then appear to gradually turn into a group of runners viewed from the side (Frames 16 to 18), then from both the front and from the side (Frames 19 to 37), then the runners appear to gradually become orange and grey triangles and triangular arrow devices (Frames 38 to 47) and the number of triangles/arrow devices gradually decreases until finally there is a single orange triangle (Frame 48). A […] logo then appears, leaving the final orange triangle from Frame 48 in the center of the letter D in the […] logo (Frame 49). In the final sequence (Frame 50), on the right side of the logo […] logo, three runners appear viewed from the front, the central runner is orange and two side runners are in grey.”
Since the publication of the chapter on “Movement marks and holograms” in the Registry’s Work Manual, there have been other applications for movement marks and holograms, and these are still pending examination at the time of writing of this entry.
We look forward to seeing more applications for non-traditional trade marks, the acceptance of which will provide clearer guidance on the Registry’s treatment and examination of such marks in terms of formalities and registrability.