All wrapped up: trademark protection for distinctive packaging
Many types of trademark elements can be protected nowadays, including names, logos, shapes, colours, sounds, moving images, short films and position trademarks.
However, not every trademark will receive a warm welcome from the trademark authorities. Packaging existing of a distinctive shape must overcome certain challenges to be accepted, which is strange given that some packaging is instantly recognisable and truly distinguishes itself from the rest.
To qualify for protection, a shape mark existing of packaging must be significantly different from existing designs. Moreover, a shape will not be granted protection in the event the design gives substantial value to the goods. Take, for example, G-Star’s popular Elwood trousers: a well-known court ruling determined that the attractive shape and appearance of the jeans were the primary factor in persuading consumers to purchase them. Therefore, they could not be considered as a valid shape mark.
If you are unable to demonstrate that a shape differs significantly from the shapes that already exists, there is an alternative option: you can proof that the shape has become a trademark through use when the shape gained recognition in the market. This will apply if the relevant public can identify a product’s origin based on its shape alone. However, it requires a significant amount of documentation to substantiate the claim that a European trademark has acquired a distinctive character through use and typically involves providing evidence that this applies in all EU countries.
In short, it is quite difficult to protect a shape as a trademark, but trademark owners do find ways to get around the requirements in practice. One popular method is to position the brand name somewhere on the shape. Adding a brand name renders the entire trademark distinctive, and once registered, you will have trademark protection that can be enforced. It remains to be seen, however, whether this registration will also protect the specific shape of your product.
Cosmetic company Rituals recently tried a different approach when it filed a shape mark for one of its products in the European Union. The logo element was blurred. However, according to the European Trademarks Office, the black square had no intrinsic meaning and did not add sufficient distinctiveness. Thus, the packaging was not accepted as a shape mark.
Author: Arnaud Bos
Bio: Arnaud is trademark attorney and within Knijff responsible for the marketing & communication. Arnaud is specialist in the metaverse and music sectors and his client portfolio includes many upcoming and renowned bands. He keeps a close eye on the latest case law in the EU and will let you know when he sees remarkable applications.