Kate O’Rourke, senior counsel at law firm, Charles Russell, says registering aspects of product packaging and design as trade marks can benefit and build brands
Trade marks for product “get-up”
Many brand owners have recognised the importance of product packaging and get-up and some have taken steps to protect this by registering aspects of their get-up as trade marks.
Heinz baked beans is a perfect example of a brand with a distinctive get-up, and Heinz has a number of registered trade marks protecting its valuable image. Heinz has a registered Community Trade Mark for its ‘Keystone Device’ on a turquoise label for a wide range of goods in classes 29, 30 and 32. Going even further, Heinz has even registered the colour turquoise in class 29 for ‘beans’, relying on evidence showing the colour’s acquired distinctiveness.
Protecting some of the other brands in the Heinz range, Heinz has also obtained a black and white registration for the top section of its keystone device for a range of goods in classes 5, 29 and 30. Every Heinz product uses this shape on the packaging of their goods, from ketchup and beans, to pasta and baby food.
The benefits of registering ‘get-up’ trade marks
The de-branded designs sold at Selfridges are a clear illustration of how product get-up can be used to communicate to consumers in the same way as a brand name or logo.
These trade marks can be a valuable asset to brands who are trying to build and protect their reputation in their overall image as they give the proprietor a monopoly surrounding the key aspects of the overall look and feel of their products or more subtle brand identifiers.
A registered trade mark can act as a deterrent to others who may consider branding their products in a similar way. On top of this, it is easier to rely on a registered trade mark to pursue an infringer than it is to rely solely on unregistered rights for a claim in passing off. As a result, a whole host of brand owners have registered the get-up of their goods as trade marks (below are some examples).
Importantly with this sort of trade mark, proprietors are not confined to pursuing infringers who use an identical mark in relation to identical goods. It is an infringement of a registered trade mark where the infringing mark: (1) is similar to the registered trade mark; (2) is used in relation to similar or identical goods; and (3) there is a likelihood of confusion on the part of the public. In addition, it is also an infringement to use an identical or similar mark where that use takes unfair advantage of the registered trade mark’s reputation or is detrimental to its distinctive character or reputation.
It is important to remember however, use of registered trade marks is essential to maintain them. Community and UK legislation provides a trade mark may be vulnerable to cancellation where it is not used for a continuous period of five years. With the current state of the law in the UK and Europe, it is uncertain whether or not ‘unbranded use’ (ie applying these trade marks to products without reference to any brand name) is necessary for these purposes.
In the recent case of Specsavers International Healthcare ltd and others v Asda Stores Ltd  EWCA Civ 24 the Court of Appeal referred questions to the CJEU concerning the use of Specsavers’ wordless logo mark. Specsavers had a registered community trade mark for two evenly sized black oval shapes overlapping, which formed part of its famous Specsavers logo.
One question referred to the CJEU was whether or not Specsavers’ use of these marks amounted to sufficient use so as to avoid cancellation of the wordless logo mark. Specsavers had extensively made use of its logo mark in green with Specsavers printed across it, but had not used the wordless logo mark in its pure form and independently of other branding.
Should the CJEU decide that use of these wordless marks separately from any branding is not necessary, this will be an important victory for trade mark owners such as Heinz. Should the decision go the other way, at least those brands taking part in the Selfridges no-noise campaign can relax for another five years.