The Court of Appeal judgment in the case of Thatchers vs. Aldi earlier this year did not just influence wider brand protection and trade marks, it has also changed the options for protecting product packaging. Two IP patent attorney and registered designs expert Dr Neil Kilpatrick outlines the impact on packaging design.
For design attorneys, trade mark case law helps us consider how to approach the more subjective tests applied to design law, rather than the more academic tests used in patents. So, I read my colleague Rachel Havard’s review of Thatchers vs Aldi with interest (click here to read).
In brief, Thatchers held this as a Trademark:
To protect this:
Against this:
And they won. And here is where my problems began.
Conventional wisdom is that registered designs are best for protecting the look of a product. They stop copycats and give the holder extra scope for protecting the time and effort spent in making the packaging (the sleeve and the can in this case) look good.
However, I fear that if the Thatchers trade mark for its Lemon Cider had instead been a registered design, they would have been unsuccessful in stopping Aldi’s Taurus cider.
Even removing the wording, the type and layout of the lemons is different; the swirl on the Taurus is fairly striking, and the background differs.
So – file trade marks for all your important packaging launches? Probably, yes.
And stop filing registered designs? I wouldn’t go that far – they still protect different things, and unlike a trade mark, designs are not invalidated by non-use.
However, like WaterRower’s (read more here) failed attempt to assert copyright infringement for its rowing machine, companies are pushing the boundaries of IP rights between patents, designs, trade marks and copyright to best protect their products.
If you would like support in creating a strategy for your packaging (or anything else protectable by IP), please get in touch with us hello@two-ip.com, or visit our website at www.two-ip.com.
