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.