In the world of fast moving consumer goods (“FMCGs”), and in particular food and drink, whether a consumer buys one product or a rival brand involves numerous sub-conscious factors, many of which relate to packaging and appearance, and brand owners seek to have distinctive, attractive packaging for this purpose. But can it be protected to prevent your competitors adopting similar packaging? Research has shown that products which look or feel similar to the major brands are more likely to be purchased than otherwise, so there is considerable value in being able to do so.
Packaging will give rise to overlapping IP rights. If the packaging has some unique inventive step, it is even possible for a patent to be a possibility – consider TETRAPAK and its patent for a new and innovative method of packaging wet foods. If your packaging has a truly inventive and new feature, do not rush to market but speak to a patent attorney – as any disclosure otherwise could destroy the novelty.
For most brand owners however patent protection in packaging will not arise but there are still routes to protection. Copyright arises in all artwork, so ensure its assigned to you if created externally and retain dated artwork but it has to be reasonable to assume copying was undertaken as arriving at a similar artwork independently will not infringe.
For the most part, the tools for the brand owner to protect packaging in the food and drink sector are registered trade marks and designs. Trade marks not only can protect words but can be 3D marks and has a trade mark registration will last indefinitely, are a valuable asset. However, for a 3D shape to be registerable as a trade mark, the shape has to be capable of functioning as a trade mark – if consumers would not be deemed to recognise the shape as indicating the origin of the product but deem it merely packaging due to it being ordinary in the marketplace, or commonplace, it may not secure registration. Even if it is new for your type of products, it may not be sufficient to bestow distinctiveness – the issue is whether the consumer will deem it distinctive. However, if the shape is distinctive, and does not give value to the product or consist of the product itself, registration could be secured. Many bottle and containers shapes have secured registration without the brand name or labelling, so it is worth pursuing, and the food and drink sector has really set the bench mark in this form of protection. In addition, protection can be maximised by registering the 3D shape with some of the labelling, but without the brand name, to secure protection for the overall appearance/colourways of the bottle or pack. Trade mark protection can be layered to maximise the scope of monopoly and keep competitors further away.
However, the brand owner’s best friend could be said to be design registration. A design registration can cover multiple designs in one application and if a specific item of the packaging is the novel aspect, not only can the overall look and decoration of the packaging be protected, the design can be for specific features. It is possible for brand owners to layer different aspects under one application to gain the greatest protection from lookalike products. Designs do require to be new or novel at the time of filing and therefore a brand refresh is the ideal opportunity to assess if overall protection can be strengthened with design registration.
In summary, there are options for protection and registration of packaging, and it is worth considering pursuing it as IP registrations are a valuable asset to business. As a trade mark attorney, working on protecting packaging is exciting as not only do you see the product hit the shelves at the end of project, the registrations may well end up being relied upon against third parties and the strength of the monopoly actually tested.
By Eleanor Coates, Senior Trade Mark Attorney, Murgitroyd
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