New Zealand: Distinctive Packaging - Protecting your Shape

Last Updated: 8 March 2011
Article by Jennifer Lucas

When it comes to cosmetics and skin care, product presentation can be the difference between a customer choosing your product or not. While there will always be a portion of consumers who are fiercely brand loyal, there are still many shoppers who will be swayed by a pretty jar or an interestingly shaped bottle.

Coming up with a new packaging shape is always going to be more expensive than purchasing a standard design in bulk from a catalogue and simply applying your branding to the outside. Designs will need to be devised and drawn up, prototypes made and manufacturers found. However, you may end up with a design that not only sets your product apart from your competitors, but if protected correctly, one which can be licensed, sold or retained to secure a distinct market advantage.

There are a number of different ways new packaging can be protected in New Zealand. This article examines those options with respect to a hypothetical new body lotion bottle in the shape of a silver fern. The bottle has a standard pump action dispenser that can be bought from a large manufacturer and used on the body shape of the new bottle.

Copyright Protection

Unlike registered IP rights, copyright will exist immediately in any new design drawings, prototypes and products produced while you are developing your new bottle design. There is no registration process and therefore no costs associated with registering your rights.

Anything tangible produced during the design process (such as drawings, design ideas (that are expressed in drawings or writing) or prototypes/models) as well as the manufactured bottle itself should be marked with the copyright © symbol, the date the work was done, and the name of the person who owns the copyright (see Commissioning under the copyright act article for more information on copyright ownership).

Copyright in these design materials will usually last until 50 years after the death of the creator of the materials. However, once the bottle is put into production the copyright will be reduced to 16 years from the date more than 50 were made.

If you ever need to enforce your copyright, you will need to be able to show that actual copying of your product took place. This can often be difficult to do, generally making copyright rights more expensive to enforce than registered rights, such as a patent or design registration.

It is also important to understand that New Zealand is one of the few countries where industrial copyright is recognised. In most countries, any copyright that existed in a design ceases once that design has been put into manufacture.  In these countries registered designs will be the primary means of protection.

Copyright Pros:

  • Free
  • Automatic
  • Long term of protection

Copyright Cons:

  • Proving actual copying may be difficult
  • Only applies to New Zealand

Design Registration

A design registration will also provide protection for the way the bottle looks. In New Zealand, a design registration will provide a monopoly for the look or shape of the bottle up to a maximum of 15 years.
In order to secure a design registration, the bottle design must be new and original and you must not have disclosed it publicly before you file your application for registration.

The process of obtaining a registered design is relatively straightforward. It involves submitting drawings or photos showing your design to the Intellectual Property Office of New Zealand. In the silver fern bottle example, the application may be submitted without showing the dispenser, allowing for different lid options to be used on the same bottle shape.  That is because the dispenser does not form part of what makes the bottle design unique.

Following a quick and (usually) uncomplicated examination the design will be registered. Your bottle can then be marked with the design registration number to deter potential copiers.

The main advantage a design registration has over copyright is that the design registration can be easily enforced. No proof of copying is necessary and often an infringer may be stopped with a simple letter outlining your rights.

A second advantage in having a design registration is that it may be lodged with New Zealand customs to prevent any counterfeit bottles entering New Zealand.  Suspicious bottles will be stopped at the border and if they are suspected to infringe your design registration they will be detained and (in most cases) forfeited by the importer and destroyed.

Finally, most countries have some form of registered design protection.  Under international treaties it can be possible to apply for the same design overseas within 6 months of filing in New Zealand and take the New Zealand filing date for those overseas application.  This can be important when it comes to determining whether the design was new on the date it was (deemed to have been) filed.

Design Pros

  • Relatively inexpensive and quick
  • Statutory monopoly of up to 15 years
  • No need to show actual copying
  • Can be used to obtain equivalent rights in foreign countries up to 6 months after filing in New Zealand.

Design Cons

  • If a third party directly copies your product from your design registration after the design has expired, this can be used as a defence against an allegation of copyright infringement.

Patent Protection

Unless you have developed a new packaging material, or a new way in which product can be dispensed from your bottle, you are unlikely to be eligible for patent protection for a new bottle shape.  A patent is design to protect ideas and new technologies, rather than the way an item looks. However, if you develop a new technology during the course of producing your product, this may be patentable. An example of this may be a new process for forming intricately shaped bottles, or the development of a previously unknown packaging material.

Trade Mark Registration

Trade mark registrations can be gained in relation to any sign which is capable of distinguishing one trader's goods and service from those of another. Sounds, smells, shapes and colours can operate as trade marks, and registrations have been granted for these things.

While it is possible to gain a trade mark registration for the shape of a bottle, it is not straightforward, especially in New Zealand. To secure registration you need to show that members of the public rely on the shape of the product to identify its source.  This normally requires evidence of advertising and promotion of the shape as a mark of origin, as well as evidence from the public and trade that the shape actually performs this function.  Examples of successful shape trade marks include:

  • the Coca Cola bottle
  • the Toilet Duck bottle
  • Toblerone's triangle packaging

The distinct advantage in gaining a trade mark registration for your bottle shape is that the registration can be renewed indefinitely so long as you continue to use the shape. A trade mark registration can also be applied for at any time, so there may be an option to file for a bottle shape trade mark once your bottle has gained a significant reputation in the market place.

When filing for trade mark protection of the silver fern bottle, you will need to submit a drawing of the bottle and identify the class of goods that you want the trade mark protection to be effective in. In this case it would likely be class 3, relating to perfumery, perfumery products, essential oils, hair lotions and body lotions.

Trade Mark Pros

  • Trade mark protection can last indefinitely if renewal fees are paid.
  • Can be applied for at any time
  • Can be used to obtain equivalent rights in foreign countries up to 6 months after filing in New Zealand.

Trade Mark Cons

  • Shape trade marks can be difficult to get registered.
  • A trade mark can be revoked if you do not use the shape as a trade mark for a period of three years or more.

Much thought (and money) is put into developing the branding for a new range of products, with the majority of effort put into establishing a trade name and company logo. While distinctive packaging is not always the most obvious way to make your mark, or necessarily the easiest, the rewards can make it worthwhile.

If you do decide to make the effort and develop unique packaging, make sure it is protected properly, so your investment pays off in the long term.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

James and Wells is the 2010 New Zealand Law Awards winner of the Intellectual Property Law Award for excellence in client service.

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