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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
Chapman Tripp
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Chapman Tripp
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions