Trademarks in motion

Pursuant to Article 134 of Decision 486, signs that are susceptible of graphic representation, capable of distinguishing goods and services on the market, may be registered as trademarks. Thus, the requirements for the trademark registration of a sign are (i) that it is distinctive, in other words, capable of indicating a concrete business origin, and (ii) that is it susceptible of graphic representation.

The rule does not limit the signs which can become trademarks. It simply mentions a series of signs that can be registered as trademarks, among which are included words, figures, labels, sounds and odors.

Definitely, words, images, shapes of objects and the combination of some or all of them are the signs preferred by entrepreneurs to distinguish their products and services in the market. Nevertheless, with the development of technology, we must expect that in the future entrepreneurs decide, more and more, to adopt “non-traditional trademarks.”

Among “non-traditional trademarks”, we find the so-called “trademarks in motion” which are those composed of a succession of images in motion. Generally, said image sequence is of very short duration (only some seconds) to allow the easy remembrance by consumers.

Although the images in motion do not appear in the list of signs that can be registered as trademarks, included in Article 134 of Decision 486, this does not prevent their registration as trademarks, since as we have stated, said list is not restrictive.

As we have indicated, the requirements for the trademark registration of a sign are that it is distinctive and that it is susceptible of graphic representation. In this sense, as long as they are capable of indicating a concrete business source, the “trademarks in motion” are, in theory, registrable since they can be graphically represented.

Nevertheless, in practice there was the question of how the graphic representation of this type of signs is made, since they are not static images but a succession of changeable images.

Said question has been recently solved by the Trademark Office in the prosecution of the first application of a trademark in motion in Peru, filed with said Office, under Serial Nº 755984, corresponding to the trademark in motion “consisting of an animated sequence, wherein the figure of a red-edged heart, which is at the center of the image, changes into a red-edged infinite symbol; moreover, in the word “SIEMPRE”, which is at the bottom part of the applied-for mark, the dot corresponding to letter “I” changes the figure of a white-edged heart on a red background to the white-edged infinite symbol on a red background. The complete animated sequence has a length from one and three seconds”. The trademark has been applied for to distinguish “clothing, footwear and headgear” in class 25 of the International Classification.

The trademark, which consists in a succession of images in which a heart appears over the word “SIEMPRE” which turns into an infinite symbol (just like the dot on letter I, initially reproduced by a heart which turns into an infinity symbol), has been reproduced in the following way: the initial image of the trademark and, next to it, the final image thereof.

Said graphic reproduction has been accepted by INDECOPI and has been published in the Electronic Gazette of Intellectual Property.

In this aspect, we disagree with the form in which the trademark has been published, since as it is an Electronic Gazette, it should contain not only the description and graphic reproduction of the trademark, but also the video of the trademark in motion.

According to the information appearing at the online data base of the Trademark Office, the registration of the referred trademark has been granted with Certificate No. 269591, in force until September 14, 2028.

Marcela Escobar