Rights holders’ innovative use of design demonstrates that in the modern market, food packaging is a vital advertising tool which is also eligible for IP rights protection.
Of the many Italian regions, Emilia Romagna is the undisputed queen of excellence for cheese, wine, oil and vinegar, and especially salumi (ham and other cured meats).
While the produce of such a richly fertile area is recognised and appreciated by consumers, rights holders in the food sector continue to invest in packaging to increase the appeal and recognisability of their products in larger retail chains. As a result, packaging has become an essential means to move, promote and protect goods.
The need to preserve and differentiate food products emerged in the 18th century, when industrialisation led to the large-scale production of goods. Metal cans ensured better hygiene than that provided by simple cardboard boxes. Since then, production techniques have continued to develop and modern containers can be manufactured in a variety of forms and materials, offering blank canvases on which manufacturers can tell stories, evoke sensations and communicate the qualities of the products inside.
The ability to shop quickly without compromising on quality or freshness is essential to modern consumers. This is evidenced by the growing popularity of take away products in supermarket chains – an area previously reserved for refrigerated products but now widely used for goods such as ready meals and cured meats. ‘Packing’ (ie, the physical protection of products from external influences between the place of production and the place of consumption) has become ‘packaging’, which functions not only to protect the product’s integrity, but also to advertise its characteristics and functions.
Packaging design has therefore become a marketing tool.
Previously, consumer choice was driven by a product’s intrinsic qualities, guaranteed by the trademark shown on the pack. Now, packaging itself can perform the distinguishing function typical of trademarks.
Food and beverage rights holders can protect the shapes of their goods as three-dimensional (3D) trademarks. In Italy and Europe, a 3D shape can be registered only if it meets all of the legal requirements and consumers clearly identify the product’s origin. The shape must therefore be original and distinctive from standard shapes already used in the industry.
Pursuant to Article 7 of the Industrial Property Code, all trademarks capable of being represented graphically including “the shape of the product itself or of its packaging” can be registered, “provided that they are apt for distinguishing the products or services of an enterprise from those of other enterprises”. A similar provision can be found in Article 4 of EU Regulation 207/2009.
Neither national nor EU law explicitly sets out the different criteria for evaluating the distinctiveness of 3D, rather than two-dimensional, trademarks. However, the European Court of Justice has ruled that when assessing 3D marks, the average consumer is unlikely to deduce the origin of a food product from its packaging without additional verbal or figurative elements (Mag Instrument/UAMI (C-136/02 P, EU:C:2004:592, point 30) and Freixenet/UAMI (C-344/10 P and C-345/10 P, EU:C:2011:680, point 45)).
In this context, distinctive character can be difficult to prove for a 3D trademark which consists merely of the product’s packaging. Nevertheless, the EU Intellectual Property Office (EUIPO) public registers provide various examples of food and beverage packaging filed and registered as 3D marks.
Therefore, it seems that rights holders can overcome a lack of distinctiveness through the acquisition of secondary meaning – that is, recognition in the market of their mark’s ability to perform its distinguishing function. This can occur through extensive use of the mark (eg, market share, advertising spend, geographical spread and duration of use) before the application date, which leads consumers to recognise the packaging – even in the absence of verbal or figurative elements – as an indication of origin.
However, acquired distinctiveness is not always sufficient. Article 9 of the Industrial Property Code (and the corresponding Article 7 of EU Regulation 207/2009) states that “signs consisting solely of the shape dictated by the nature of the product itself, of the product shape necessary for obtaining a technical result, or of the shape giving a substantive value to the product, cannot be registered as a trademark”.
This cannot be remedied – not even through secondary meaning – because such registration would give rights holders the unjustified advantage of a potentially unlimited period of protection.
One alternative to 3D trademarks is protection through industrial design.
EU design law has followed the developments of the food and beverage sector and in an attempt to meet its needs has adopted the Regulations on Community Designs (6/2002) and Modalities of Execution (2245/2002). These follow the EU Designs Directive (98/71/EC), which was adopted in order to harmonise national design laws in EU member states.
According to Article 1.3, industrial designs have a unitary character and equal effect throughout the European Union.
Further, they are intended to protect the ornamental or aesthetic aspects of a product. Article 3 of the Community Designs Regulation defines a ‘design’ as “the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation”.
Pursuant to Articles 1.1 and 1.2, design rights are acquired through registration and use.
Designs are registered at the EUIPO by filing a specific application which is subject to no evaluation with regard to the substantive conditions of protection (ie, novelty and individual character). The first criterion is met if no identical design was made available to the public before the international application, excluding the possibility of the owner filing the industrial design within 12 months of its first publication (ie, grace period). The second criterion is met if the design evokes on the informed user a different overall impression to any other public industrial design.
Protection is granted for five years, renewable for a maximum of 25 years. In Europe, several designs can be protected with a multiple application, provided that they are all in the same Locarno Agreement classification class.
Registered design owners have the exclusive right to use their design and to prevent third parties from using it without consent. Such ‘use’ includes making, offering, placing on the market, importing, exporting or using a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes.
In the latter case, protection for unregistered designs through use is effective for three years from the date of first disclosure to the public, provided that the design fulfils the conditions of protection (ie, novelty and individual character). Owners of unregistered designs have the right to prevent third parties from using the design, only if the contested use is as a result of copying. This is deemed not to be the case if the use results from an independent work of creation by a designer who is unfamiliar with the prior design (Article 19.2 of Community Designs Regulation).
In addition, protection for unregistered designs is conditional on proving that the requisites for access to protection apply. This places a particularly difficult burden of proof on the party seeking protection before the courts in the event of a dispute.
Cured meats in today’s market
Over the past two decades, the salumi market has been moving towards pre-sliced products mainly sold in plastic trays.
For the purposes of standardisation and reduced production costs, trays tended to be rectangular with rounded corners and usually covered most of the product inside – effectively hiding it from view. However, brand owners have started to diverge from this traditional form and begun to favour modern, transparent trays which make visible the products inside. In addition, brands are appearing on small labels that are usually placed in an inconspicuous and almost self-effacing position – further emphasising the packaging itself.
Even in the salumi sector, which one would assume needs only standardised packaging, innovative companies have been able to set themselves apart by offering products that appeal to consumers through different dimensions and features.
However, the food and beverage sector and its consumers must improve their knowledge of the legislative framework.
First, developing an effective IP strategy to protect packaging requires time and money. Registering trademarks and designs involves inevitable costs. Nevertheless, by protecting the appearance or a part of a product, rights holders can improve their position in the food and beverage market and increase their income. Moreover, designs and other IP rights enable brand owners to combat counterfeiting and reduce the risk of infringement. Ultimately, a balance between costs and benefits needs to be reached.
Second, EU member states and food and beverage organisations should increase consumer awareness of the dangers of fake goods and the consequences of counterfeiting on the economy.
Finally, consumers should be encouraged to pay attention to products and packaging designs that are not necessarily connected to trademarks.
Nadia Adani is a European trademark and design attorney who graduated in communication and economic sciences, specialising in marketing and communication, from the University of Modena and Reggio Emilia.
In 1995 Ms Adani joined the Bugnion SpA office in Modena, where she has gained experience in IP rights, in particular in the field of trademarks, managing international IP portfolios for a wide range of companies. She is skilled in international availability trademark searches, registration strategies, prosecution and trademark and design enforcement.
She coordinates the international trademark and design team and is a member of the funding department and agri-food team at Bugnion.
Elena Tripodi graduated in law in 2000, became an officially certified lawyer in 2003 and received her LLM in international trade law from the University of European Studies, Turin in 2015. Ms Tripodi has gained significant experience working in legal firms, dealing with assistance and consultancy in trade and contractual matters. In 2006 she joined the Bugnion SpA office in Parma, where she deals with legal matters relating to intellectual property and unfair competition. Since 2012 she has managed the legal sector coordination, Bugnion Legal.