Trademarks in Packaging

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 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

“It is not a coincidence that supermarket own brands pack designs are very similar to the designs of brand manufacturers. Retailers are often interested to take a free ride to increase their own sales and turnover.”

simply, any sign must function as an indicator of origin, have to draw a link to a certain undertaking and should perceive the packaging design not as a mere packaging. There must be something more than that. As you can see, this is sometimes very difficult to show.

ES: What are the different types of trademarks that would be applicable for the packaging industry?

ER: Thinking about trademark law, the first things that come to mind are presumably company names, product names as well as logos, such as the Apple logo. When it comes to the packaging industry, figurative marks are most important. Another type of trademarks are three-dimensional marks with three-dimensional depiction, and also colour marks, for protection for a specific colour or colour combination of the product packaging.

Regarding all these types of trademarks you always face the same problem. It may be questionable whether such a sign can function as an indicator of origin. Fortunately, this can be overcome by showing so-called acquired distinctiveness through use. In other words, you have to show to the examiner or judge that the packaging has gained market acceptance. This is always difficult to ascertain and generally involves market surveys that certify that the packaging has gained a certain recognition value within the relevant trade circles. In my opinion, the trademark officers have become much stricter. Unless you can show a survey, and the sign is already known to a certain extent, it will be nearly impossible to obtain protection for packaging design as a trademark.

“Milka had launched one of its chocolate products in square packaging. Ritter Sport was the owner of the respective threedimensional trademarks in Germany, and invoked these trademark rights against Milka.”

ES: I sometimes notice in the supermarkets that own brand designs are very similar to branded goods. Where are the lines drawn there and have there been any disputes that you’re aware of?

ER: It is not a coincidence that supermarket own brands pack designs are very similar to the designs of brand manufacturers. Retailers are often interested to take a free ride to increase their own sales and turnover. It’d only in exceptional circumstances that there is consent to use such a similar design.

More often no such consent is granted, and the packaging imitation is made on purpose by the third party. Whether or not such similar packaging can be prohibited depends to my experience on two main factors. Firstly, is the design of the brand manufacturer protected by intellectual property rights? If not, it may be very difficult to do something about it. As a general rule, without having protection by means of intellectual property rights, copying cannot be prohibited.

The second important factor appears is if there is sufficient distance between the respective overall impression of the packaging designs. Often such pack designs are not identical, but only similar so there is a certain distance which is deliberately maintained.

In conclusion, provided there are no intellectual property rights which can be involved one can only rely on claims based on - in Germany one would say “unfair competition” in the UK “passing off”. The more distance there is between the packs, the more difficult it will become to do something about it. However, even if intellectual property rights are affected, there is still no guarantee that something can be done. In a nutshell, there is no clear answer to the question and it always depends on the circumstances of the specific case.

ES: Do different countries take different approaches to trademarking or is there an international consensus?

ER: Unfortunately not. Different countries have different rules when it comes to trademark protection and no general statement can be made. The particularities of national laws need to always be considered. National trademark laws even differ within the European Union, although a harmonisation by the European legislator has been taking place. There are still national particularities when it comes to the interpretation of the relevant provisions of the trademark act. There is one particularity I’d like to point out in the European Union. It’s possible to apply for pan-European intellectual property rights at the EU intellectual property office, called European Union trademark registrations and community design registrations.

ES: Trademark disputes often are long and drawn out for example the dispute between Milka and Ritter Sport. It was finally decided in favour of Ritter Sport. What were the deciding factors there?

ER: The case was finally decided earlier this year. The final ruling was reached by the German Federal Court of Justice after a nine year long battle. It started with Ritter Sport attacking Milka, who are their main competitor in Germany when it comes to chocolate products. Milka had launched one of its chocolate products in square packaging. Ritter Sport was the owner of the respective three-dimensional trademarks in Germany, and invoked these trademark rights against Milka.

In response, Milka submitted requests for cancellation with the German Patent and Trademark office in 2011, in order to have Ritter Sport’s threedimensional trademarks for its packaging deleted. Milka won in the first and second instance. Finally, the case went to the German Federal Court of Justice and it confirmed that Ritter Sport’s trademark on the square packaging will remain in place. The court confirmed that a three-dimensional dimensional mark for packaging is not barred from registration and there are no grounds for refusal. It also said that the packaging design of Ritter Sport has acquired distinctiveness through use in Germany and therefore functioned as an indicator of origin, and consumers in Germany would perceive the packaging of Ritter Sport as a trademark

ES: Can you give us some other examples of packaging trademark disputes and how they were resolved?

ER: Over the last years there has been a substantial number of decisions regarding three-dimensional trademarks and packaging designs in Europe and Germany. The vast majority of decisions concern the question whether a three-dimensional trademark is registrable as a trademark in the first place.

For example, back in 2011, Coca-Cola applied for a three-dimensional trademark for the plain Coca Cola bottle. In the first and second instance, the European intellectual property office denied protection as a trademark. This rejection was also confirmed by the European General Court for trademark matters in 2016. The judges stated that Coca-Cola was not able to show that the bottle has acquired distinctiveness through use throughout the European Union, meaning that the plain bottle would not be perceived as a trademark. Therefore, no protection was granted.

Another case was decided in Germany in the year 2012 involving the German juice concentrate brand Capri Sun. Capri Sun is the owner of various three-dimensional trademarks for the drink packaging. The brand’s drinking pouch is trapezoidal in profile when filled and rectangular when flat. Capri Sun invoked these-three dimensional trademarks against the product of a competitor whose product packaging was nearly identical in shape. In this case the court in Hamburg confirmed trademark infringement, saying that the German consumer will easily perceive the drinking pouch of Capri Sun as a trademark and not as a mere packaging. It was also taken into account that Capri Sun is a well-known brand in Germany.

ES: In conclusion, what tips would you give to our listeners who may be interested in trademarking their product packaging? What are the key points to bear in mind and what pitfalls should be avoided?

ER: I always recommend to my clients to get the packaging design protected first by means of a three-dimensional design registration, and only subsequently optimise the level of protection, for instance by means of trademarks. The exact strategy depends of course on how much budget is available. One has to bear in mind that registering a three-dimensional trademark is not only time consuming and sometimes difficult it also involves high costs. A threedimensional trademark, when it involves obtaining a survey on market acceptance can cost about €20,000 per country. Therefore, it is always recommendable to start with a design registration, as the costs are lower.

The general recommendation I can give is that companies should ensure that they have built a certain basic foundation of legal protection when introducing new products and packaging and they should have this in place in good time before the market launch. n

Dr. Eckhard Ratjen