Trademark protection for packaging - Strategies for registration

Abstract

In the market today, there is a great need of trademark protection for packaging, since design is important and valuable for manufacturers to distinguish their goods. It is, however, not easy to obtain such trademark protection.

The purpose behind my master thesis is to examine how a packaging should be designed to obtain trademark registration in Sweden and in the EC. My starting point is SCA Hygiene’s egg-shaped plastic packaging for panty liners (the egg). The egg was refused registration by PRV due to lack of distinctiveness but was allowed registration as an EC trademark by OHIM. The question I have asked myself is why the assessment of distinctiveness differs between Sweden and the EC although Sweden has changed its law after the EC directive on harmonisation of the member states´ trademark law. To answer the question, in my thesis I have examined the conditions for registration stated in the EC directive as well as in the Swedish law and how courts and authorities have interpreted them.

My intention is that the thesis shall be suitable for using as guidance for companies wanting to protect packaging with the help of intellectual property laws and especially the Trademark Act. The guidelines can be used both when wanting to design a packaging, to make it possible to register it as trademark as well as to assess whether an already existing packaging is possible to register.

To decide whether a packaging is possible to register the first step is to determine whether it is possible to reproduce graphically. The next step is to decide whether it is distinctive. The authorities and courts assess distinctiveness first in relation to the goods for which registration has been requested and secondly in the relation to the perception of the public. Therefore the relevant market for the goods must be analysed as well as what competitors’ packaging look like. It is also necessary to consider who the product is directed towards. Finally the packaging itself must be studied to assess whether it is only an ordinary fundamental form or if it has any special elements and the total impression of it. The packaging cannot be banal to obtain protection. The last thing to examine before an application for trademark registration is whether the exceptions in CTMR Article 7 (1) (e) are applicable. However, I have not found any cases where trademark applications have been refused because of these exceptions.

I have noticed a tendency that it is easier to obtain trademark protection for packaging in the EC. However, the examiners both in PRV and in OHIM use almost the same principles and follow the case law from ECJ and CFI. The differences in assessing distinctiveness are probably because the examiners are different persons with different opinions and experience.

I have reached the purpose behind my thesis through studying literature; books and articles as well as studying case law from PRV, PBR, RegR, OHIM, the Court of First Instance and the ECJ. To obtain a practical view and see whether my conclusions are true in practice, I have made two interviews.