Five tips for ensuring packaging becomes eligible for trademarks

This article was first published by and the full article can be found online here.

Many well-known food and drink businesses look to secure, by way of registered trademarks, protection against competitors copying the "shapes" of the packaging in which their products are sold.

The problem is that registering the shapes of packaging as trademarks, let alone subsequently successfully enforcing those registrations against third party infringers, is not an easy task in Europe.

A recent case, involving Coca-Cola, highlights the typical problems that businesses face.

In summary, Coca-Cola attempted to register, as a community trademark, the 3D shape of one of their bottles in which they sell their world-famous drink.

When Coca-Cola appealed the case to the General Court of the European Union, the court held that the bottle shape was merely a variant of common bottle shapes used in the trade for the type of liquid goods in issue. Thus, the shape was not "inherently distinctive". Further, in order for the shape of the bottle to have "acquired distinctive character", it had to be proved that, at the date the trademark application was filed, a significant proportion of average consumers across the EU "perceived" the goods as originating from a particular business because of the shape of the bottle in which the goods were sold (as opposed to, for example, any other trademark which might also be present on the packaging for the goods, for example the name "Coca-Cola").

Despite the fact that survey evidence had been filed in an attempt to show that a significant proportion of the relevant public recognised the bottle shape as indicating the trade source of the goods in question, the court held that Coca-Cola had failed to prove its case – in particular, it had only obtained survey evidence in ten of the 27 member states of the EU.

So, all in all, not exactly a "good news story" for brand owners. So what should they do now?

May I suggest the following five tips:

  • Adopt and use packaging shapes that depart significantly from the norms or customs of the sector of goods concerned – they are more likely to be deemed "inherently distinctive" and thus prima facie registerable.
  • Promote the shape of the packaging as identifying the trade source of the goods (e.g. in the case of Coca-Cola, perhaps running an advertising campaign using an advertising slogan like "look for the bottle", next to the image of the 3D bottle shape they want to register, but without any (or only very limited) reference to the name "Coca-Cola", nor any use of the Coca-Cola logo mark/colour ways). By educating consumers to perceive the goods as originating from a particular business simply because of the shape of the packaging in which the goods are sold (and not any other trademarks, which might also be present, for example the name "Coca-Cola", the "Coca-Cola" logo, or the surface decoration/appearance of the label used on the bottle), the shape may well "become" a trademark and thus should be capable of registration.
  • Having done this, you will still need to obtain evidence that, as a result of your efforts, average consumers have indeed come to see the shape of the packaging as indicating the trade source of the goods – not an easy task. Survey questions will need to be carefully drafted, so that they are not struck out for "leading" the witness. They will need to prove that such persons would rely upon the shape of the packaging as denoting the origin of the goods if it were used on its own.
  • Look to register the shape of the packaging of goods as registered designs (not always possible, for reasons too long for this article, but worth considering and, in the right case, actioning as an alternative to trade mark registration).
  • Do whatever you can to prevent other traders from using similar packaging shapes for the same types of goods, so as not to dilute the uniqueness of your "shape" trademark – not easy if you don’t have any registered trademarks or designs to rely upon, but threats of "passing-off" might be an option in some cases.

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