Competition around new packaging formats and pack designs can be fierce in the packaging world. But when does it make sense to protect these by trademark, and what are the challenges along the way? Elisabeth Skoda talks to Dr. Eckhard Ratjen, who is a certified IP lawyer focusing on trade mark law and copyright at the legal firm Boehmert & Boehmert, to find out more.
TRADEMARKS IN PACKAGING
ES: What parts of a pack can be protected by trademark? Is it the whole pack, a certain functionality, material or design?
ER: First of all, companies are free to decide what they want to try to register as a trademark. The question should be: Is it always reasonable? There are quite a few pitfalls. As a general rule, in Europe any signs can be protected as a trademark. Trademark laws in Europe stipulate that the shape of the packaging of goods, for example, can be protected as a trademark and there is a presumption to do so. This this is the wording of the trademark laws. There are strict requirements for the allowance of protection, and I can give some examples. First of all, signs must always be capable of being representatives in a manner which enables the public to determine the clear and precise scope of protection. Packaging material would be excluded from protection as a | 20 | Packaging Europe
trademark. I would refer you for example to technical intellectual property rights such as patents and utility models. Another obstacle to protection is that no protection is granted for signs which consist exclusively of the characteristics of goods. Technical functionalities, such as a zipper or a closure, are excluded. A third reason why signs often cannot be protected as a trademark in packaging is that no protection for signs is granted exclusively on the shape which gives the so-called substantial value to goods. For example, an elaborate bottle by a famous designer - you would assume that the customer is purchasing the product because of the design, and not because of the product as such. Also in this case packaging would be barred from registration. The most important grounds why trademarks are often refused in packaging designs is the following: Any sign must be capable of being distinguishable from the goods of one undertaking from those of other undertakings. This sounds like a typical sentence of a lawyer. Putting it
