A ground breaking case concerning the registration of holograms as national Swedish trade marks has finally come to an end after a thirteen year registration procedure. It has now been confirmed that it is possible to register holograms provided that they meet the standards of graphical presentation set by the Siecklemann-case.
In 1997, SmithKlineBeecham (“SmithKline”) applied for registration of its trade mark in the shape of a hologram. The mark consisted of a hologram in the shape of a kaleidoscopic picture which changed colour depending on the reflections of the light. The Swedish Trade Mark Office (“STO”) declined the application arguing that the trade mark was a “muddle” of shifting checked patterns, and because of this the mark was devoid of distinctive character.
SmithKline appealed to the Court of Appeals which referred to the formal shortcomings of the STO examination and remanded the case back to STO for re- examination.
In 2004 the STO rejected the now slightly amended application and held that a hologram of shifting appearance cannot meet the requirements of graphical presentation, nor did the written description of the mark sufficiently specify the scope of protection. Once again SmithKline appealed to the Court of Appeals.
The Court of Appeals held that the Swedish Trade Mark Act contains no restriction which would exclude a hologram from being registered as a trade mark, provided that it can be sufficiently presented graphically. The Court referred to the Siecklemann- case (C-273/00) concerning registration of a fragrance as a trade mark, where the ECJ stated that “a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective”.
The Court of Appeals held that the requirements for graphical representation in the Siecklemann-case should be applied when determining the graphical representablility for holograms. SmithKline’s application contained only one comprehensive representation of the images included in the hologram. This single image did not, even in combination with the submitted written description, constitute a sufficient graphical representation in accordance with the standards in the Siecklemann-case, and therefore registration was not possible and the appeal rejected.
SmithKline appealed to the Supreme Administrative Court and referred to recent OHIM decisions where holograms had been registered as Community trade marks on the basis of applications which included shorter descriptions of the holograms and its combinations of colours. SmithKline argued that if these applications met the requirements of graphical representation, so should the current mark, given that it, together with the description of the hologram, also presented a physical copy of the hologram.
The Supreme Administrative Court granted leave and confirmed the decision of the Court of Appeals i.e. that holograms may be registered as trade marks provided that the hologram is not too complicated to present graphically in light of the standards set by the Siecklemann-case. These requirements were however not met in this specific application.
(The Supreme Administrative Court - Case No 1658-08, 12 May 2010)