Armed with examples of bottles and chocolates, panelists from Canada, China, Europe and the U.S. explained how packaging can be protected using different rights, including trademarks, patents, copyright and designs, as well as through unfair competition and passing off laws.
They also compared protection for specific examples of packaging—encompassing product shapes, labels and functional designs.
Katie Cameron of R.G.C. Jenkins in the UK said that in Europe there is “a huge amount of protection available” for logos such as the UPS and ARSENAL shields. As well as benefiting from copyright protection, they could be registrable as both Community trade marks and designs. She added that the shields would not be excluded from design protection on the grounds that they are based on old designs, as they have been updated: “The updatedness is sufficient to overcome novelty objections.”
In China, said Lian Yunze of Hylands Law Firm, the logos would also be registrable today as trademarks and design patents. However, he cautioned that on October 1 a change to the patent law comes into effect, which will rule out design patent protection for labels. In the U.S., moderator Christopher J. Schulte of Merchant & Gould said he predicted the ARSENAL logo would be protectable under both copyright and trademark law—“provided the examiner’s not a Manchester United fan.”
Lian described how FERRERO ROCHER last year won a case at the People’s Supreme Court in China over the protection of its packaging as a trademark. The company had failed to enforce its rights against a lookalike product at first instance, but at second instance the judge found that its golden foil, brown cup, small label and plastic box with a large label on it amounted to unique packaging. The trademark was also very well known, having been used in the country since the 1980s. On March 24 last year the Supreme Court upheld the decision.
Cameron said that there are some examples, such as the MAGLITE torch, where applicants have found it hard to protect product shapes as Community trade marks in Europe where acquired distinctiveness is necessary: “You have to show that the mark is well known throughout the European Union. So you need a huge amount of evidence at OHIM.”
Discussing the LEGO brick, PHILIPS razor and CROCS shoes, the panelists agreed that the functionality of each product would be a significant hurdle to registration. Justine Wiebe of Bereskin & Parr noted that the studs on the LEGO brick had been refused protection by the Supreme Court of Canada, and she said the courts focus on “the particular configuration and arrangement of the elements” in the product. Nevertheless, she believed that, from a personal point of view, all three products would be seen as distinctive by many consumers: “I’m sympathetic to all three examples.”
