Ahead of the Packaging Innovations & Empack exhibition, Nathaniel Taylor takes a look at the forms of Intellectual Property (IP) typically arising in the packaging industry and the boundaries between the different forms of protection that might be available.
In the packaging industry, companies typically seek various forms of IP protection for packaging innovations, including patents, registered designs, and trademarks.
Patents
Patents protect new and inventive technical solutions, such as innovative packaging materials, adhesive compounds, methods of manufacturing, or unique functional features of a packaging product.
Patent protection is typically sought for its robust technical protection and the availability of tax relief schemes (such as Patent Box) relating to patented inventions.
For example, the Patent Box scheme allows companies to elect to apply a significantly lower rate of corporation tax (reduced to 10%) on profits attributable to qualifying patents.
In relation to packaging, the attributable profits may include the contribution of patented packaging to the sale value of the product and may even extend to the entire sale value of the product, e.g. where the packaging performs a function that is essential to allowing its contents to be used in the intended manner (e.g. in the case of an aerosol or inhaler). This can amount to significant savings.
However, patent protection is generally considered to be more difficult and expensive to obtain, when compared to other IP rights.
Moreover, patent protection is not available for purely subjective features, such as aesthetic aspects of a packaging, that might serve to distinguish the product from the competition.
Registered designs
Registered designs are more commonly sought in relation to packaging, protecting 2D and 3D features that have an aesthetic purpose.
For example, designs may typically be registered to protect features that serve to make the packaging visually appealing and distinctive, such as distinctive shapes, colours, and patterns.
- This form of protection prevents others from copying the unique appearance of the packaging, helping businesses maintain their competitive edge in the market.
- Registered design protection can be obtained relatively inexpensively and quickly, which is well-suited to the packaging industry where designs can change relatively frequently.
- However, the validity of a design is generally untested prior to registration, typically offering less robust protection that only extends to copies and designs that are substantially similar, i.e. not creating a different overall impression.
Additionally, features of a design that are solely dictated by the technical function of the packaging cannot be protected by a registered design. So if the shape or appearance of a feature is a necessity for the packaging to function as intended, the feature cannot be protected by a registered design.
Trademarks
Trademarks protect brand identity, including brand logos and names, that may typically be applied to packaging to help businesses distinguish their products from competitors and build brand recognition among consumers.
In the packaging industry, it is quite common for trademarks to also be sought for the shape or three-dimensional appearance of packaging that consumers associate with the brand (so called ‘shape marks'). A famous example of this is the Coca-Cola bottle shape.
- In contrast to patents and registered designs, there is no novelty requirement for trademark registration and so trademarks can also be sought after showing or selling the product/packaging to the public.
- Trademarks can be registered relatively inexpensively and the registration is generally easier than obtaining a patent, but more complex than registering a design.
- The trademark must be dissimilar from existing trademarks registered for identical goods/services and potentially provides indefinite protection (with renewals).
- However, a trademark is susceptible to attack if its use is discontinued for a period – making it unsuited to frequent design changes.
Trademarks cannot be registered for technical or functional features of packaging. However, the functional exclusion is considered with respect to how consumers perceive the shape to function. So shapes that only provide a technical advantage during a manufacturing stage, for example, may still be protected by a registered trademark. This points to the idea of complementary coverage.
Complementary Coverage
Complementary coverage relates to the possibility of registering multiple forms of IP protection for a packaging innovation, for example to maximise the strength, value, and/or term of protection.
For example, Tetra Laval recently defended a 3D trademark for the shape of their Tetra Brik carton package, for which protection was further sought via patent applications. In this instance, the patent applications were directed to the technical features of the package providing an increased ratio of internal volume to surface area, which served to reduce material costs during manufacture. The 3D trademark protected the resulting shape of the carton package that generated brand recognition, providing overlapping protection. Here it was considered that the trademark did not fall into the technical exclusion in view of the technical function being confined to the manufacturing side, and having no effect on how the consumer (in this case professional intermediaries in the foodstuffs industry) considered the packaging to function.
For businesses in the packaging industry, this presents both challenges and opportunities. Our teams of trademark, patent and design attorneys are able to advise clients on the potential benefits of a shape mark in addition to patents and registered designs.
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.
