Packaging trade marks
What packaging cues and looks can you protect with a trade mark? We show you how these help food and drink makers protect their brands.
What is a trade mark? Most people will mention a brand name or a logo, but they might fail to mention subconsciously using other branding ‘cues’ to identify a preferable item. ‘Brand cues’ could include the shape or the overall designs. These elements also function as a trade marks.
Packaging comes in many forms
In the world of Fast-Moving Consumer Goods (FMCG) – in the food and drink sector particularly, cheaper own-brand look-a-likes are commonplace. Unfortunately, imitation is not always the sincerest form of flattery.
For example, in 1997 Asda’s Puffin brand of chocolate sandwich biscuits was found to ‘pass-off’ the famous Penguin Bar. If Asda was to continue selling Puffin biscuits, they needed to change their packaging design.
How can you protect your brand from look-a-likes?
When a new product or packaging design is created, it is important to think about protecting all the commercially important aspects of this at that time. That includes the shape of the product, its packaging, the surface pattern and decoration including colours and labels. All forms of registrable intellectual property rights including trade marks, designs and patents should be considered.
Whilst unregistered intellectual property rights may also arise on creation such as copyright and unregistered design rights in your artwork and packaging, these may not offer comprehensive protection.
A Chartered Trade Mark Attorney can provide you with strategic advice regarding this.
Think outside of the box… or bottle
Naked or simple shape marks can be challenging to register as trade marks. There are some types of shapes which simply cannot be registered. Definite no-nos for registration under both EU and UK trade mark law are shapes which (i) result from the nature of the goods themselves such as a banana-shaped case for a banana, (ii) which are necessary to obtain a technical result such as Lego® bricks, or (iii) which give substantial value to the goods such as the cut of a diamond.
We need to think carefully about whether we can protect our packaging via trade marks, or whether a different form of intellectual property protection might be more suitable. For example, the shape of packaging maybe easier to protect by way of a registered UK and Community design if it is sufficiently novel and has not been disclosed to the public anywhere in the world more than 12 months ago.
That said, in the food and drink sector, a number of well-known brands have successfully registered the “naked” shape of the packaging of their famous products as trade marks.
The following are all registered trade marks. Can you identify the products just from the shape of their packaging?
See the end of this blog for the answers
Good trade mark protection consists of several “layers”. Take for example, the following elements of packaging design have been registered as trade marks in addition to the brand name itself in order to protect the ‘get up’ or trade dress of the famous brand:
Food for Thought
Trade marks, when registered strategically and in combination with other intellectual property rights such as registered designs, can provide you with effective weapons in the on-going battle against look-a-likes.
Therefore, it is a good idea to instruct a Chartered Trade Mark Attorney to review your new packaging designs once finalised and before launch. They can provide practical guidance on how best to protect your packaging and also ensure that it does not infringe existing third party rights.
Answers a) Coke b) Orangina c) Heinz Salad Cream d) Toblerone
Joanne Ling is a Chartered Trade Mark Attorney & Senior Associate at Maucher Jenkins
Dr. Janet Strath is CITMA Paralegal at Maucher Jenkins and co-authored this blog