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Importance and Challenges in Protecting a Hologram Trademark- India

April 19, 2022

By Ananyaa Banerjee and Sandhya A. Parimala

A hologram (holography) is a photographic technique wherein the light scattered from an object is recorded is recorded and presented in a way that it appears to be three-dimensional. Similar to a photograph, a hologram is a permanent record of the light that is reflected off an object. However, a hologram looks more real and three-dimensional and moves as one looks around it.[1] Hologram marks are important as they play a very important role in avoiding false imitation of goods and services.[2] Further, the hologram mark plays an important role in peculiarly identifying the origin of goods and services. Therefore, companies are gradually getting interested in using holograms as trade marks to prevent false replication.[3]

Position of Hologram Trademarks in different Jurisdictions

Position in the European Union

The EU law recognizes the registration of hologram marks. According to the EU Law, a hologram mark is defined as a trade mark consisting of elements with holographic characteristics.[4]

A hologram is required to be represented by submitting either a video file or a graphic or photographic reproduction which contains all the views necessary for sufficiently identifying the holographic effect in its entirety.[5] Further, a description or indication of colour is not possible to be filed for hologram marks from October 01, 2017, as the representation of the trade mark alone defines the subject matter of the registration. There is no limit of views for representing the hologram as long as they fit in one single .jpeg file or on one single A4 sheet.[6]

Some examples of hologram marks registered in the EUIPO are: (1) The hologram mark applied by Google LLC (2-1)[7]; (2) The hologram mark applied by Eve Holdings Inc. ()[8], (3) The hologram registered by Zwilling J.A. Hencels AG ()[9].

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Position in the United States

The US Law has also recognized holograms as trade marks. According to the US law, the hologram is entitled for registration only if it sufficiently enables the consumers to identify the hologram with the applicant’s brand which is sought for registration. Further, if a hologram has two or more views, the examiner should refuse registration on the ground that the application seeks registration of more than one mark.[10]

In the case of In re Upper Deck Co.,[11] it was held that if a hologram is used for common purpose (non-trade mark purpose), then that means that the consumers would be less likely to perceive the applicant’s use of holograms as trade marks. In this case, the Board held that a hologram used on the trading cards in different shapes, sizes and positions and did not function as a mark, as 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 source.

Even though the law in United States appears to be little stringent, few companies were successful in registering hologram marks. One example of a hologram mark registered in United States is the hologram of American Express (7-1)[12].

Position of Hologram Trademarks in India

In India we see the holograms being used on different products. We see the usage of holograms on various credit cards, tickets etc. and the security hologram on the Indian currency notes (8-1) helps to prevent any creation of fake notes. This establishes the importance and need for protection of a hologram. However, there appears no trade mark application for registering a hologram in India till date. Neither the Trade Marks Act, 1999, the Trade Mark Rules, 2017 nor the draft Manual on Trade Marks have any specific provisions with respect to holograms.

However, hologram marks were very precisely discussed in the case of Toasha Agencies v. Siddhant Choudhary[13]. In the said case, the defendant claimed that he has used the trade mark TOASHA on a hologram, and therefore, does not cause any confusion with respect to plaintiff’s use of TOASHA. In this regard, the Court held that the registration of the defendant’s TOASHA is for a word mark and not for hologram. The use of the hologram with the words TOASHA on it by the defendant on its invoices thus does not constitute use of the registered trade mark of the defendant.

It is pertinent to note that, considering the importance of hologram marks in protecting the products from counterfeiting, companies/organizations should now consider applying for hologram marks. However, there might be few challenges in applying for a hologram mark in India.

Challenges in Protection of a Hologram Trademark in India

The difficulty in representing the hologram mark graphically and the ability of identifying the source of the products/services for which it is applied:

The definition of trade mark under Section 2(1)(zb)[14] mandates the distinctiveness and capability of representing the mark graphically. However, representing a hologram graphically on a paper would be difficult and it may not be possible to correctly depict all the different angles in which the hologram can actually be seen in reality. Furthermore, even though a hologram prevents other third parties from counterfeiting the products, it may be difficult to identify the source of the goods/services immediately upon seeing a hologram as it is not represented through any words/images or any other features which an average person can identify and understand. However, to overcome this, one way would be to adopt laws similar to other jurisdictions like the European Union, wherein they have removed / eased the requirement of graphical representation and started accepting video files of the marks, which would enable the examiner as well as other third parties to exactly understand the changing appearance of the hologram from different angles for which registration is sought for the purpose of registration and objection / opposition.

The difficulty in describing the mark during any enforcement actions

Since a hologram is with respect to the changing appearance of an image from different angles, at the examination stage or at the opposition stage it might be difficult to describe and compare the appearance of the mark(s). This may further cause difficulty in establishing the distinctive nature of the mark or similarity with another, especially in contentious matters. The same would require proper access to the video clip in the Trade Marks Journal and the Registry’s online status page.

Conclusion

The process of registration of a hologram mark is slightly difficult in India. However, since hologram marks have many advantages, and there are constant efforts in creating and protecting one’s IP, we must look at adopting new techniques and ways to promote such marks by determining the registerbility of a trade mark with the availability of technology. Numerous certification mark owners are using holograms to enhance the integrity of their marks and to prevent unauthorized label reproduction. On the lines of what is being followed worldwide, we can look at following a system which does away with, or atleast relaxes, the concept of graphical representation of a trade marks.

Sandhya A Parimala, Associate at S.S. Rana & Co. has assisted in the research of this article.

[1] India – Non-Conventional Marks available at https://www.conventuslaw.com/report/india-non-conventional-marks/, last accessed on January 25, 2022.

[2] Rachna R. Kurup & Nimita Aksa Pradeep, Non-Conventional Trademarks in India: The What, The Why and The How, available at: http://www.cnlu.ac.in/2021/CIRF/9%20Rachna%20R%20Kurup%20and%20Nimita%20Aksa%20Pradeep.pdf, last accessed on January 25, 2022.

[3] Tanisha Agarwal & Vanshaj Mehta, Hear Me, Touvh Me, Taste Me, Smell Me: Conventionalizing Non-Conventional Trade Marks in India available at: https://www.researchgate.net/publication/323167162_Holograms_and_intellectual_property_law_A_multidimensional_issue, last accessed on January 25, 2022.

[4] https://guidelines.euipo.europa.eu/1803468/1787324/trade-mark-guidelines/9-10———–9-3-10-hologram-marks

[5] Article 3(3)(j) of EUTMIR: in the case of a trade mark consisting of elements with holographic characteristics (hologram mark), the mark shall be represented by submitting a video file or a graphic or photographic reproduction containing the views which are necessary to sufficiently identify the holographic effect in its entirety

[6] https://guidelines.euipo.europa.eu/1803468/1787324/trade-mark-guidelines/9-10———–9-3-10-hologram-marks

[7] EUTM 017993401

[8] EUTM 002559144

[9] EUTM 017579491

[10] Trademark Manual of Examining Procedure § 1202.14

[11] In re Upper Deck Co, 59 USPQ2d 1688, 1692-93 (TTAB 2001)

[12] Registration No. 3045251

[13] Toasha Agencies v. Siddhant Choudhary, CS(COMM) 1441/2016

[14] Section 2(1)(zb), Trade Marks Act, 1999: “trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours

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