Registering a depiction of a product label as a trade mark is worth considering for important product lines where copying may be an issue.

Background

We often focus on registering words and logos as trade marks rather than registering the entire image of the label for, say, a jar of jam. There are good reasons for this, not least the fact that a word or logo trade mark can be applied to all kinds of different products and marketing materials in a variety of ways, whereas the product label can often only be used on the product itself and is perhaps more likely to be redesigned or updated, so is less adaptable.

However, in some circumstances, registering the entire label that will be applied to a product may be worth considering (in addition to registering word marks and logos) since it can offer protection – especially against ‘lookalikes’ – when the more common forms of trade mark may not.

Examples

Some decisions by courts and trade mark registries point to situations when objections to the use or registration of a later trade mark based on label trade marks have succeeded where a registration of a word or logo would not.

For example, the EU Courts upheld an opposition based on the mark on the left, against the mark on the right, despite clear differences in the words:

               

The marks were found to be similar based on both the colour schemes and the drawings of a seated female figure. If the opponent had only registered its word trade mark Carbonell, or its logo (the word Carbonell in a frame with a curved top), or even the female figure alone, they could not have succeeded.

The UK Intellectual Property Office, in part relying on the above decision, recently made a similar judgment in a case concerning brands of curry powder. Mark (1) below was found to be similar to mark (2), despite the different brand names used:

             

Once again, the finding of similarity was based on the presence of a combination of the identical/similar elements present in both labels. If the owners of mark (1) had followed only the approach of registering their brand names and logos – KFL and Kings as shown at the top of the label – they would not have had a basis on which to claim that the later application was for a similar trade mark.

Finally, an important recent case in the UK courts involved Thatcher’s (the cider company) and Aldi. Thatcher’s has registered the trade mark on the left, and Aldi sold its own cloudy lemon cider in the packaging on the right.

           

Thatcher’s brought a claim of trade mark infringement in the High Court, but lost, principally owing to the fact that the similarities between the respective labels resided mostly in the use of pictures of lemons and lemon leaves, and use of the colours yellow and green. However, in the Court of Appeal, Thatcher’s won, with the court finding that Aldi had taken unfair advantage of Thatcher’s trade mark which possessed a reputation. Again, the registration of the product label enabled success where a registration of a word mark or logo would not.

Comment

Registering a depiction of a product label as a trade mark is worth considering for important product lines where copying may be an issue. It will be especially useful for consumer goods such as food and drink products, where retailers or competitors often draw inspiration (to put it mildly) from successful products, and may sometimes overstep the line.

Other avenues to consider for protection of product packaging are copyright and registered design protection. We discussed Marks & Spencer’s court victory last year against Aldi over the design of a gin bottle here.

If you need any advice on registering product labels as trade marks, please get in touch to speak to one of our attorneys.