Holograms have been used for decades as security devices against counterfeiting in the field of credit cards and banknotes. But does this make them eligible for trademark registration? Dr Ralf Sieckmann continues our series on less conventional IP with a look at registering and protecting holograms and trademarks.

Advancements in photography in the mid-twentieth century introduced holograms
to the IP world. Hungarian physicist Dennis Gabor patented the process of recording an image in three dimensions in 1948, but the use of holography did not really advance until the invention of the laser in 1960, which allowed the holograms to optically store and retrieve the threedimensional objects captured. Traditionally the domain of anti-counterfeiting activity, businesses have been using holograms for decades to distinguish their products from fakes. But does this make them eligible for trademark registration?

In theory, trademark legislation should allow for such registrations, provided that the mark is distinctive enough to be used by a business to uniquely identify itself and its products and services to consumers. The difficulty arises in the method of graphically defining the mark in trademark registrations. Holograms by their very essence are difficult to capture in paper form, because the paper print will not be able to show the movement of the images. The image may work electronically, but on paper, the published mark will only be a substitute of the mark itself; a figurative mark which needs graphical representation and adequate written description if it is to succeed. Applicants wishing to register their hologram as a mark should therefore seek to describe the hologram in as much detail as possible, providing visual views of the hologram in various frames with descriptions of angle and appearance.

A case for the EU
In the EU, procedures for registrations of such ‘non-traditional’ trademarks were laid down more resolutely thanks to the 2002 Sieckmann case (Sieckmann v Deutsches Patent- und Markenamt). It established that a trademark could consist of a sign which was not in itself capable of being perceived visually (for example, a scent or a noise), provided it could be represented graphically. Applicants for holographic trademarks should therefore seek to demonstrate that the sign is: clearly and precisely identifiable, and therefore self-contained, easily accessible and intelligible, as well as durable, unequivocal and objective. They should also use high-resolution frames avoiding fading or picture overlapping, as the European Court of Justice (ECJ) does not allow descriptions of the visual effects alone.

Marketing the right
In comparison, US trademark practice requires a company to prove customer recognition of the holographic device they are seeking to register. The US trademark manual for examination states that a hologram used in varying forms does not function as a mark in the absence of evidence that consumers would perceive it as
a trademark. In a case brought by Upper Deck Company in 2001, the Trial and Appeal Board held that a hologram used on trading cards in varying shapes, sizes and positions did not function as a mark, because the record showed that other companies used holograms on trading cards and other products as anti-counterfeiting devices, and there was no evidence that the public would perceive the applicant’s hologram as an indicator of origin. The Board noted that: ‘the common use of holograms for non-trademark purposes means that consumers would be less likely to perceive the applicant’s uses of holograms as trademarks.’ Therefore, in the absence of evidence of consumer recognition of a mark, the examining attorney should refuse registration.

Holograms by their very essence are difficult to capture in paper form, because the paper print will not be able to show the movement of the images

Similarly, an application by MasterCard to trademark its holographic device – two
interlocking globes positioned beneath the MasterCard design – was rejected in 2002. As in the case of the Upper Deck Company, the US Patent and Trademark Office (USPTO) objected to its application, as a ‘phantom mark’, due to lack of perceived customer differentiation, and on the grounds of its vague description of the device to be registered. A new application by MasterCard is in the pipeline.

Companies that can prove their holographic device is distinct both in terms of design and customer recognition should find that their applications have more chance of success. In the last decade, the Office for Harmonization in the Internal Market (OHIM) has registered holograms for packages for cosmetics, video entertainment and cigarettes, while USPTO has registered several holograms for packages of cosmetics, foodstuffs, cigarettes and clothing.

An easier approach?
Companies which find such trademark registration procedures too restrictive could opt instead to register their holographic devices as international trademarks. In 2004, the French company Cool Shoe Corporation took such a route, filing an international trademark in France and extending it into other territories through the Madrid Agreement. The device – comprising a hologram mark representing spectacles in place of ‘OO’ in the word ‘cool’ for use in clothing and footwear – has since been filed in various countries under the agreement. Although objections were raised by some countries, they were, as usual, only based on elder trademarks and on the generic wording used to define goods.

This approach will only work in a country that has a liberate view on the registration
of simple holograms, such as in France, Australia, the US and at the OHIM, and requires that the applicant firm is based in that country. Once registered, WIPO will simply duplicate the trademark as an international trademark. It is then up to the designated national offices to grant or reject protection under their national trademark regulations.

If such an approach does not work, a cheap, quick and simple alternative is to file a national or Community Design. Such designs can be registered on packaging, as a film or on other parts, provided the hologram is new or less than 12 months on the market. OHIM, for one, allows registration of animations and other designs containing movement, approving the registration in 2003 of an animation with a sequence of up to seven slides.

CAN I REGISTER A HOLOGRAPHIC DEVICE AS A TRADEMARK?

The ease of registering holographic devices varies by country. However, as a general rule, your application will stand a bigger chance of success if you adhere to the following rules:

• Describe the hologram in as much detail as possible, providing visual views of the hologram in various frames with descriptions of angle and appearance.
• Study trademark legislation in your country of work. National applications in certain countries stand a better chance of success, and can be extended to become international trademarks.
• In Europe, applicants must also demonstrate that the sign is clearly and precisely identifiable with the product. This will show that it is self-contained, easily accessible and intelligible, as well as durable, unequivocal and objective.
• US applicants must also prove that consumers perceive the device as an indicator of origin. Without it, the device will be considered a ‘phantom mark’.
• If trademark procedures prove too restrictive, a quick and simple alternative would be to file a national or Community design.

This article first appeared in IP Review, issue 13

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