Gesture trademark are generally associated with and applied for by musicians, celebrities or influencers, in order to protect their “signature” gestures. Examples of these gestures are Usain Bolts’ victory pose, dance moves such as “the dab” or rituals as performed by Michael Jordan’s “caulk throw” before every game. Gesture marks are typically considered non-traditional trademarks, as compared to the more traditional words and slogans filed as trademarks. Other non-traditional trademarks include shape marks and position marks. Under certain circumstances, gestures may be regarded as brand indicators or “identification marks”. It is undoubtedly possible to attach meaning and immediately identify or associate a gesture with someone or something, for example:
1. We all have become acquainted with Usian Bolt’s famous victory pose known as the “Lightning Bolt”, “Bolting” or “the Bolt”.
2. The famous “devil horn” or “rock on” sign used by Gene Simmons, a member of the American rock band Kiss.
The main issue faced with the registration of a gesture as a trademark is the lack of distinguishability and the capability to serve as a “badge or origin”. Gestures very often become of common use in the public sphere, meaning that they are no longer associated with a particular person or thing and so cannot distinguish their goods or services from others. One also cannot prohibit others from performing or using common gestures and thus gestures in general cannot be easily monopolised. It is a fundamental requirement that a gesture must be distinctive to be registerable as a trademark.
The other important consideration is that a gesture trademark is limited to the goods it is applied to or the service it is used with. Usain Bolts’ victory pose may be registerable as a trademark, but only for the goods that it is applied to. Therefore, the athlete filed a Community Trademark with the European Union Intellectual Property Office, depicting his signature “lightning bolt” (as shown above) but specifically for handbags and leather apparel. Bolt could not, for example, enforce the trademark with reference to kitchen cookware. Should you have a distinctive gesture which you wish to protect as a trademark in South Africa, the following guidelines are applicable:
1. Gesture marks will be treated as the subject of the other type of mark it represents, for example a motion or figurative mark;
2. The representation of a gesture mark, if treated as a figurative mark, could consist out of a single picture;
3. The representation of a gesture mark, if treated as a motion mark, could consist out of several frames depicting the gesture;
4. For the purpose of examination, a written description explaining the gesture mark may be required.
Smit & Van Wyk can assist with the registration and enforcement of gesture trademarks in South Africa.
