Plastics in Packaging © 2011 Sayers Publishing Group • January 31

TRADEMARKS

Building a strong brand with good packag-ing is hard work and involves money,sweat and hopefully not too many tears.

To help protect this effort, brand owners have acombination of Intellectual Property (IP) toolsavailable to them. These tools include laws ontrademarks, designs, copyright, patents andunfair competition.

On 1 January 1876, 10 years before JohnPemberton’s registration of Coca-Cola in the US,the first UK trademark was registered for Bassbeer. It was a revolution designed to removeproduct uncertainty, with the public housedrinker given two options: The local yellow ‘brew’or a Bass-branded beer of reliable quality.

Today, Bass is still on the market with astrong reputation for premiumbeer, which illustrates how a goodIP policy can help a businessachieve its objectives.

Essential features of trade-mark laws in Europe derive fromDirective 89/104/EEC and the Com-munity Trademark Regulation (Dec1993).

Three main ideas emerge regard-ing packaging: The shape of goods ortheir packaging may constitute a trade-mark; whether the packaging can be rep-resented graphically; whether thepackaging can enable the distinguishing ofone product from one another.

But to preserve the public interest, certain‘functional’shapes are excluded from trademarkprotection. Indeed, to keep it simple, trademarklaw cannot serve to grant monopoly on technicalexclusions. This exclusion applies to the packag-ing of goods that in themselves have no intrinsicshape, such as liquid, rice or flour.

‘Naked’shapes and ‘trade dress’ can both beprotected but protection is not guaranteed norwithout limits. For business purposes, a cost-benefit analysis must be taken into account as IPprotection and enforcement might be expensive.

Recent casesIn 2004, the Brussels Court of Appeal ruled on alegal dispute between Anglo-Dutch brandowner Unilever and Belgium’s VandemoorteleGroup over margarine packaging for the Beceland Vitelma brands, respectively.

The court concluded that there was a visualsimilarity between the 3D mark of Becel and the3D sign used by Vitelma, exacerbated by the sim-ilar contrast of colours. The fact that the goodsare similar, directed at the same consumer, andcommercialised on the same shelves of stores, ledto a risk of confusion.

“For the court, the presence of different wordsdid not affect what is key to the distinctiveness ofthe mark,” explains Jean-Christophe Troussel,who works for the international law firm Bird &

Bird and is an expert in trademark. “Visualswith colour contrast are essential, which is inter-esting because not all courts see it that way. Theverdict was a breach of Unilever’s trademark.”

In 2009, the Antwerp Court of Appeal in Bel-gium ruled against a motion by brand ownerMars regarding an ‘infringing product’by Nestlé.

The court decided that ‘the word marks onthe packaging’ were dominant and differentenough to prevent consumers from becomingconfused between the two ready-to-eat candies,which were Mars-owned Maltesers and Nestlé’sKitKat Ball.

Mars appealed the first ruling and Nestléfiled a counterclaim to obtain nullity of Mars’trademark. The Court of Appeal decided thatMars’trademark (red package with flying choco-late balls, but without the Maltesers name) wasinvalid.

During the same year, the Paris Court ofFirst Instance in France ruled in a case betweenTic Tac Ferrero’s registered trademark and an‘infringing’ product called Pick Up beingimported and commercialised in France byCandy Team.

“The court ruled that Ferrero’s ‘naked’box ofTic Tac is a valid 3D trademark and it is notpurely functional and is distinctive,” says Trous-sel. “Ferrero had submitted very strong marketstudies showing that a vast majority of con-sumers associate the shape of the box with theTic Tac brand.”

However, the court found no trademark

infringement, largely because of the prominent‘Pick Up’ label, but also because the challengedpackages did not have right angles, but ratherrounded edges evocative of the shape of thesweets inside, and they also had side walls nar-rowing towards their base.

Due to the similarity of the sweet itself, thecourt did consider that Candy Team had sought

to promote its own products by tak-ing undue benefit from the invest-ments made by Ferrero for its TicTac products, which constituteddistinct acts of parasitism.

On this basis, the court orderedCandy Team to pay e200,000($272,000) in damages to Ferrero.

Sometimes similar cases bring dif-ferent outcomes, as ‘look-alike’cases canbe subjective and depend on a complexset of facts and laws. As such, some sci-entifically-based detection of formal andgraphical similarities has been estab-lished, in order to help both brand ownersand IP lawyers with court cases.

One example is original packagingfor a cake product by Dr Oetker and an infring-

ing product by Gellwe. Look-alike analysis bySpain-based Gescom concluded that therewere 98.15 per cent relevant similaritiesbetween the two products, but the lessons todraw from this analysis are not straight-forward.

“Shapes can be protected as trademarks butcourts tend to consider them not just like anytrademarks, and the same applies to colourtrademarks,” says Troussel. “It is harder toobtain protection and the scope of such protectionmight be narrower than for traditional marks.”

Besides, court decisions are not always pre-dictable as, even within the framework of theEuropean Directive, each national court has itsown way of thinking and ruling.

“Raising the awareness of these courts to con-sumer behaviour and on the importance of thevisual signs within the packaging must be con-tinued. Brand owners, experts and lawyers needto work hand-in-hand to bring these issues tocourt rooms.”

What is not negotiable is the importance ofprotecting the brand and the design of the pack-aging. If it is worth copying, it is definitely worthprotecting.

* Dominique Huret is beverage and packaging expert at independ-ent consultancy Cape Decision in Belgium.

On your marks!Dominique Huret* reports on the importance of trademark protection

A court ruled that consumerswould not get confused betweenthese two products

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