Scope of protection and limitations in packaging design freedom

27 June 2008

Wouter Pors, Partner, Den HagueJean-Christophe Troussel, Partner, Brussels

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Content

Introduction: functions of packaging and challenges

Protection by designs vs. technical features

Protection by trade marks vs. technical features

Conclusions

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Introduction: functions of packaging (1)

Packaging performs many essential functionsPackaging ensures that products are moved from source or production to destination in the best possible condition, and it does this in three ways

Protection

Containment

Preservation

Source: WRAP, Guide to Evolving Packaging Design

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Introduction: functions of packaging (2)

Packaging is also a powerful marketing toolprovides useful information

promotes the products

On the down side, packaging is part of the concern about the environmental impact of modern life style

Developement of environnement friendly packaging

Need to optimise packaging to improve customer perception and (technical) performance and to reduce environmental impact

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The dilemma: R&D + marketing versus legal

Packaging may need to meet technical requirements

Marketing may want to present innovative packaging, having “gadget” appeal

This may prevent both design right and trade mark protection

Marketing will want to make the design of a new product/packaging as attractive in itself as possible

Advertising may focus on appeal as well as on source

This may prevent trade mark protection

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Design and technical features

Article 8 section 1 Design Right Regulation

Article 7 section 1 Design Right RegulationA Community design shall not subsist in features of appearance of a product which are solely dictated by its technical function.

Reason: you should patent (expensive, complicated)

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Food packaging: Twin-cup

President The Hague 12-10-2005, SFA Packaging v. The Filet Company

Only some elements are actually protected

Most elements are either not new or determined by technical requirements:

Division of food components

Relative size of food components

Stacking of empty containers

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Basic approach: Philishave

European Court of Justice 18-06-2002, Philips v. Remington (trade mark case)

Mouse Hé ManMouse Hé Man Philishave 3 Philips Remington Philishave 3 Philips Remington 1947 1962 1966 2002 20021947 1962 1966 2002 2002

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Philips v. Remington

Court of JusticeTrade mark law should not limit the freedom of choice of competitors in regard to the technical solution they wish to adopt in order to incorporate a function

This applies even if that technical result can be achieved by other shapes, since the text does not indicate otherwise and this prevents individuals from obtaining perpetuate exclusive rights relating to technical solutions

Trade marks are perpetual, design rights are temporary

Court of Appeal Den Bosch 4-11-2003, BIE 2004/44, Synergis v. Geha

Court follows Philips v. Remington for design rights

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Some escapes?

District Court The Hague 19-04-2006, BIE 2007/41, Wijbenga v. Eisenkolb

Limited scope of protection for design right

But not invalidated!

District Court The Hague 15-02-2006, BIE 2006/69, Atag v. Boretti

Even if some aspects of design are determined by technical requirements, there still are enough design options to award copyright protection

Probably no design right protection

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Trade mark protection of packaging shapes

Article 2 of Trade Mark Directive 89/104/EEC

Article 4 of the Community Trademark Regulation (CTMR)

Shape of goods can be registered as trade marks

Shape of packaging can be registered as trade marks

Conditions:If capable of being represented graphically

If distinctive

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Exceptions: some shapes are excluded

Article 3.1(e) of the Directive and Article 7.1(iii) CTMR

Signs which consist exclusively of:

the shape which results from the nature of the goods themselves

the shape of goods which is necessary to obtain a technical result,

the shape which gives substantial value to the goods

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Exclusion of technical shapes - What is excluded?

Philips/Remington 79 and 84⌗Shapes

whose essential characteristics perform a technical function

when these essential characteristics are attributable only to the technical result

Basic benchmarkIf the shape is registered as a trade mark, are competitors limited in their freedom to chose the technical solution they wish to adopt in order to achieve a function?

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Why are technical shapes excluded? Rationale

Public interest in the free use of the specific shape of the product in question (Philips, # 74-76)

Interface with patent law (take vs. give and take)

Trade marks cannot serve to grant monopoly (unlimited in time) on technical solutions or functional characteristics of a product which a user is likely to seek in the products of competitors

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Does that exclusion apply to packaging?

Article 3.1(e) only excludes «shape of goods», not shape of packaging

ECJ, Henkel decision, 12 February 2004

Certain goods have no shape without packagingExamples: powder, liquid, rice, flour, yogurt, ready-meal

Packaging chosen imposes its shape on these goods

In this case, the packaging is assimilated to the shape of the product when assessing the grounds of refusal set out in Article 3(1)(e) of the Directive

Quid for pre-packaged goods that have an intrinsic shape? See Toblerone case (below).

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Exclusion of technical shapes: further guidance

Exclusion of technical shapes is a “preliminary obstacle”Functionality and distinctiveness are separate issues In practice, issues are blurred (functionalities as signs of non-distinctiveness - shape held distinctive and, by the way, non-functional)

No “inburgering”proof of acquired distinctiveness is no remedy (cfr Lego case)

Multiplicity of shapes is no safe-harbourThe mere existence of other possible shapes (which allow the same technical result) does not (necessarily) render the mark non-functional

The addition of minor arbitrary features is no escape (Lego)The fact that the shape is disclosed in a patent (Lego)

is never unimportantcan be decisive as such («preferred form»)but is not necessarily decisive

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Illustrations

Tribunal of Hertogenbosch 18 April 2007, Rayovac/Philips

Application of «essential functional feature»

French Supreme Court, 30 May 2007, Philips/Rayovac

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Illustrations

OHIM, Weetabix case (Cancellation Division, 22 December 2006)Exclusion to be construed narrowly: all functional shapes are not excluded - only shapes that are «crucial» for the technical result

Benchmark: if shape is modified, is technical result affected?

«Practical advantages» do not necessarily qualify as «technical results»

Mark (shape of product) held valid

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Illustrations

Toblerone/Harrods Gold Bar (Brussels Court of Appeal, 2 June 2004)

Both signs were accepted as 3D trade marks: no technical result performed by the shape

Product with intrinsic shape: no assimilation of the packaging with the shape of the product

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Illustrations

OHIM, Lego decisionGrand Board of appeal,10 July 2006

Lego brick is wholly functional : there is nothing arbitrary nor ornamental present in it (studs, secondary projections in the underside)

The essential functional characteristics of the shape are attributable solely to the technical result

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Trade mark: other shape mark limitations

District Court The Hague 08-05-2002, IER 2002/39, Mars v. Kraft

Shape marks have acquired distinctiveness through extensive use

Court of Appeal The Hague 03-01-2008, Mars v. KraftTriangle shape is common for packaging

Bar shape is valid due to extensive use

Triangle shape is not valid, no proven extensive use

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Shape which gives substantial value to the goods

ECJ 20-9-2007, C-371/06, Benetton v. G-Star

Dutch Supreme Court 08-09-2006, NJ 2006/492

Dutch Supreme Court 13-10-2006, NJ 2006/561G-Star argued: public buys Elwood jeans partly because they are pretty, but also because they recognize the source.

So: shape (also) gives substantial value to the goods

ECJ: that cannot constitute a trade mark even if it acquired attractiveness as a result of its recognition as a distinctive sign following advertising campaigns presenting the specific characteristics of the product in question.

Beware how you market your shape mark!

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There’s much more to say about this

Legal development has not stopped yet

So plan for strategy prior to market introduction and monitor execution of that strategy

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Thank you for your attention

If any questions:

wouter.pors@twobirds.com

jean.christophe.troussel@twobirds.com