Hidden IP: Unlocking the power of trade marks for packaging

Every day, businesses generate valuable intellectual property ("IP") - often without realising it. In this blog series, Andrew McDonald draws attention to some of the IP being created by businesses, which might be overlooked, undervalued or not utilised. 

This blog covers the importance and the various benefits of registering trade marks to protect product packaging in the market.  

Product packaging can attract a host of IP rights, for example, copyright in the graphic elements, unregistered design rights in the shape and configurations, registered designs for the shape and surface decoration. If the actual packaging itself is novel, then it might even be capable of protection as a patent. But the importance of trade marks for packaging can often be overlooked.

Following the recent case of Thatchers v Aldi, it is now clear that trade marks for packaging have scope to provide robust protection from copycat products. 

What packaging can be protected by a registered trade mark?

Trade marks can be obtained for “words, designs, letters, numerals, colours…or the shape of goods or their packaging”. Typically, the trade mark will be for a representation of the front face of the product packaging – perhaps a bottle, can or packet. This is the view a consumer will see when shopping online or in a supermarket.

However, in order to be validly registered, the trade mark must be sufficiently distinctive. Trade marks for less conventional elements of packaging, such as the colour or shape of the product, may require evidence of ‘acquired distinctiveness’ to be given to the UK Intellectual Property Office (IPO). This is especially so if registration for those elements is sought in separate applications. The IPO will expect evidence that demonstrates that consumers associate that element with the product in question. 

Benefits of registration

Once registered, the holder of the trade mark can take infringement action against direct copies, e.g. counterfeit goods, without needing to show a likelihood of confusion. Evidence of a registered trade mark will usually be enough to obtain an online take down of such items with online retailers.

For some ‘dupe’ or ‘copycat’ products, there may also be a claim for infringement on the basis of the similarity of the packaging to the registered mark, but only where there is a likelihood of confusion on the part of the customer. However, for those design more sophisticated copycat products a ‘benchmarking’ approach is adopted. The concept of benchmarking is to play off the distinctive features of packaging, while employing enough differences to make it clear that the product does not originate from the holder of the mark. Only in rare cases does a shopper accidentally buy supermarket own brand products instead of the real thing. This is benchmarking at work. The supermarkets will sail “close to the wind” hoping to stay just out of trouble.

But for well-known registered trade marks, there is additional protection where it can be shown that a similar product is seeking to take unfair advantage of the mark’s reputation. This protection is available where it can be shown that the advantage being taken by the copycat product has the risk of diluting or tarnishing the reputation of the existing mark.

While this remedy has been around for some time, only recently has it been deployed with greater success in relation to copycat products. The Court of Appeal in Thatchers v Aldi held in January of this year that Aldi’s copycat lemon-cider product was intended to ‘call to mind’ Thatchers’ own cider product and create a ‘transfer of image’. The Court found that Aldi ‘was able to achieve substantial sales … in a short period of time without spending a penny on promot[ion]’. 

An appeal of the decision to the Supreme Court by Aldi has just been rejected, giving brand owners confidence that there is some recourse to those looking to free-ride off their investment.

Unlocking the potential of a packaging trade mark

So, when considering how to maximise the protection of packaging trade marks, brand owners should:

1. Think beyond just logos and trading names to what elements of your packaging are worthy of protection.
   
   
2. Break down the most distinctive elements into constituent parts and consider separate applications for those elements. 
   
   For more unconventional elements, such as the colour and shape of products, think about whether you can show that consumers associate those elements with your product. If so, getting a registered trade mark is possible. If not, think about how consumers might be educated to make that association, perhaps through advertising campaigns. Great examples here is Cadbury® and the colour purple and Coca-Cola® and the colour red.
   
   
3. Use the trade mark registrations to take swift action against counterfeit and direct copy products via online takedown procedures from online marketplaces.
   
   
4. For dupe and copycat products, consider whether there is a likelihood of confusion between the products and/or if the product seeks to take unfair advantage of your packaging. If so, there is likely a basis for a claim for infringement.

If you would like advice on packaging trade marks, do not hesitate to get in touch with our specialists.

Andrew previously wrote about the importance of database IP rights and the various types of IP protection available for databases, you can read this article here. 

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