Baker McKenzie: Hologram: New form of trademark in Thailand?

The designs on packaged goods are becoming more creative with graphics such as holograms being increasingly utilized. Holograms are now registrable as a trademark in many countries throughout the EU and UK as well as in Australia, etc. Currently, the Japan Patent Office ("JPO") accepts the registration of holograms as trademarks with approximately 10 holograms already registered. An example of a hologram mark registered in Japan includes, among others, the registration of a hologram trademark on a premium gift card that changes colors depending on the angle it is viewed.

Under the Thai Trademark Act, the definition of "Mark" in section 4 is "a photograph, drawing, invented device, logo, name, word, phrase, letter, numeral, signature, combination of colors, figurative element, sound or combination thereof". While a hologram could potentially be considered a "Mark" under such definition, the trademark registrars currently do not allow the registration of holograms as there is no clear interpretation of the definition of "Mark" or precedent. Rather than taking a broad view of the intention of this section, the registrars are following the strict literal interpretation and will not accept holograms as a new form of trademark, nor allow their registration as trademarks under the current law.

Although holograms cannot be registered as trademarks in Thailand, they are permissible to be used as trademarks assuming such holograms are not confusingly similar or identical to any existing holograms. It is not necessary to register a trademark (in this case a hologram) to be able to use it, as long as it does not infringe any other trademarks (holograms). If an unregistered hologram is copied, it may be possible to take action against such unauthorized use by relying on the Copyright Act, the Penal Code, and/or the Civil and Commercial Code, depending on the facts and surrounding circumstances of the case.

As there is no clear indication if certain graphics are eligible for registration, an amendment to the Trademark Act may be forthcoming to protect new marks entering the market. In the previous amendment of the Trademark Act in 2016, we saw the introduction of sound marks, which has resulted in the registration of more than five sound marks in Thailand.

At the moment, attempts are being made for scents to be included as a "Mark" in a potential amendment to the Trademark Act. It is ideal for those pushing an amendment of various "Marks", including scents and holograms, to come together and be aligned with other countries.

Businesses are obviously being impacted by the COVID-19 pandemic and need to adapt in order to thrive in the new normal. In addition, the government sector also needs to accommodate people and entrepreneurs in this age of innovation. The idea of the hologram marks is also one of the innovations that the Trademark Act can adjust to address and meet the needs of changing business marketing tools.

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Authors: Tanakrit Tangburanakij and Praewpan Hinchiranan

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