Trade Dress/Get-Up Registration
Trade dress (TD) protection is a form of non-traditional mark that business owners should consider when expanding their intellectual property (IP) portfolio. It plays a crucial role in building product and service reputation, ultimately increasing market reach.
What is Trade Dress Protection?
Trade dress protection extends to the visual characteristics and appearance of product packaging, get-up, and even the décor in service delivery settings. This protection covers the commercial look and feel of a product or service, helping businesses distinguish themselves from competitors.
For example, the attributes supporting TD protection for a product box include:
- The shape and design of the packaging
- Essential colours forming part of the trade dress
- Specific placement of registered trade marks (words and images)
- Graphic marks and slogans
Requirements for Trade Dress Registration
A successful trade dress application must meet the same requirements as an ordinary trade mark under Section 9 of the Trade Marks Act and Regulations 1993 (amended). These requirements are:
- Distinctiveness: The trade dress must be unique.
- Capability of Distinguishing: It must differentiate similar products and services from competitors.
- Non-Functionality: The features of the trade dress should not be essential to the product or service's function.
- Badge of Origin: It should serve as a brand identifier.
How to Proceed with Trade Dress Registration
1. Scope of Protection: Validate the registration of the TD.
- Seek protection for packaging of goods under class 16, covering the packaging material (wrapper, container, label).
- Include the relevant class of the product, e.g., yoghurt in class 29, and class 34 for matches.
2. Nude Labels:
Use blank space endorsements for trade marks/devices/slogans/descriptive matter.
- Include views of the shape/container (front, rear, side, and bottom).
- Disclose essential colours with suitable colour claims.
Protection Against Competitors
Pending Registration:
Passing Off: Applicants can seek relief under common law rights if they can show:
- Reputation in the TD within the market.
- Misrepresentation by a third party.
- Damages suffered (e.g., profit loss, brand tarnishing, or dilution of distinctiveness), supported by documentary proof.
Registered Trade Dress:
Infringement: Under Section 34 (1)(a)(b)©, owners of registered TD can seek relief if:
- The infringing party uses the TD in relation to identical or similar goods/services.
- The TD is well-known, allowing for relief against dilution through adaptation, imitation, or reproduction, regardless of the similarity of goods/services.
Non-Traditional Relief:
Additional forms of relief may be available depending on the specific circumstances of the infringement, such as
- Copyright Infringement in the case the Act 1978;
- The Advertising Regulatory Board (ARB) considering product packaging to maintain fair competition in the market; and
- Marketing strategies which safeguard trade dress against imitation and misuse, whilst enhancing brand recognition and establishing a strong market presence.
By understanding and leveraging trade dress protection, South African businesses can safeguard their unique brand identities and enhance their competitive edge in the market.
We strongly recommend that the necessary IP expert advisors are on board to facilitate trade dress protection in parallel of traditional IP protection.
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.