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How to protect your packaging design

The significance of a product’s packaging makes it a prime target for copycats seeking to imitate a successful product to increase their own market share. Imitation can significantly impact your brand’s exclusivity, reputation and, ultimately, profitability. Many brand owners protect their packaging to as great an extent as they do their brand name and logo. Design registration provides a quick, convenient and cost-effective way of doing so.

Here, our intellectual property solicitors take a look at how registered designs can be used to protect your product packaging. We consider which elements of your packaging might be eligible for registration and explain the process involved. We discuss the advantages your business can gain from securing the appropriate registrations and consider any additional protection that may be available.

This article is based on UK registered design right. Since design rights are territorial, you may need to consider seeking registrations in several countries if your commercial operations extend outside of the UK.

Is my packaging design eligible for registration?

UK registered design right (UK RDR) protects the visual elements of a product, such as its colours, shape, contours and texture. Your design does not need to have artistic merit to qualify.

UK RDR applies to both 2D and 3D designs but cannot protect features of your packaging that are necessary solely for its technical function or its need to connect to another product.

Examples of elements of your packaging that may be eligible for design protection include the following:

  • Its shape, lines and contours, such as a bottle.
  • Its colour.
  • Its graphics.
  • Its texture and ornamentation.
  • Its ‘get-up’.

To qualify for registration, your packaging must satisfy the following two legal criteria:

  • It must be new, and
  • It must have individual character.

The first requirement means that your packaging must not be identical or very similar to any already on the market. The second requirement is a little more technical. Your packaging will be deemed to have ‘individual character’ if it produces on an ‘informed user’ a different overall impression to that given by any earlier design. It is a subjective test that needs to be considered on a case-by-case basis. Our expert intellectual property solicitors will assess your packaging and advise on which elements are eligible for registration as a UK RDR.

Any disclosure by the designer of the packaging within the 12 months leading up to the filing date will not count when considering whether a design is new and has individual character. If someone other than the designer makes the same or a similar disclosure, the design might subsequently fail the registration criteria. Disclosures, including those made by the designer, may jeopardise any design registrations required outside the UK, since some countries do not operate a comparable grace period. Speak to our registered design experts before you make any disclosure if you are unsure.

What are the benefits of registering my packaging design?

Since UK RDR can protect those aspects of your packaging that set it apart from its competitors and appeal to consumers, it is an ideal choice for brand owners seeking to grow and protect their market share. It gives its owner a monopoly over the design. Unlike other intellectual property rights, such as copyright and unregistered design right, you do not need to prove that a third party copied your design to hold them liable for infringement and force them to stop their activities.

Obtaining legal protection for your packaging design has several key benefits, including the following:

To prevent competitors from copying your design

Eye-catching designs help consumers to quickly and easily identify your goods. Many consumers select items from a cursory glance, often on the understanding that they are purchasing familiar goods based on their packaging. If shelves are packed with products in identical packaging to yours, consumers can become confused. Your market share suffers, and sales can be lost to competitors.

Protecting your packaging as a UK RDR gives you the right to force copycats to stop their activities if they amount to an infringement of your registered design, and to refrain from such activities in the future. You may also be entitled to damages to compensate you for any lost sales or harm to your brand. The infringer may be forced to account to you for the profit they have made from their infringement.

Take a recent case involving Marks and Spencer and Aldi. The case involved several UK RDRs owned by Marks and Spencer in their Christmas gin liquor bottle. The bottle comprised various design features, including an LED light in the base, gold flakes within the liquid and a wintry scene featuring tree silhouettes. When Aldi launched its ‘Infusionist’ light up gin bottle, Marks and Spencer considered the design too close to its own, and so an infringement of the various registered designs it held for the bottle. Marks and Spencer brought a claim against Aldi for registered design right infringement and won.

The fact that your packaging is protected as a registered design can act as a deterrent against copying. When would-be infringers are aware that you proactively protect your brand, they may be less likely to imitate it, aware of the potential legal ramifications of doing so.

To improve your chances of enforcing your rights

Your packaging may benefit from protection by unregistered design right without you taking any proactive steps, since such rights arise automatically in specific circumstances. Unlike registered designs, unregistered designs are not monopolistic rights, meaning you would need to prove copying to succeed in an infringement claim. UK RDR protection lasts longer than its unregistered counterparts. If you renew your design registration, it can provide protection for a maximum of 25 years, whereas unregistered design rights last between 3 and 15 years, depending on the type of right. Registering your design provides a greater degree of protection than relying solely on unregistered design rights. In reality, many brand owners view UK RDR and unregistered design rights as complementary, and factor both into their brand protection strategies.

How do you register a design?

The design registration process is relatively quick and cheap, particularly compared to other forms of intellectual property protection, such as patents. Most brand owners choose to work with experienced intellectual property solicitors, like ours, when applying for a design registration. This ensures that the process runs smoothly, and that the widest possible protection is obtained.

Generally speaking, the process involved in design registration is as follows:

  1. Prepare your application
    All design registrations begin with an application to the UK Intellectual Property Office (IPO). Since UK RDR is concerned with a product’s appearance, the key aspect of your application will be a series of images or representations that clearly depict the packaging you wish to register as a design. This is usually in the form of line drawings, but you may choose to use photographs, although they would need to be particularly clear.

    The images must enable the IPO, and anyone subsequently viewing your registration, to clearly identify your design. Where your packaging is in 3D, several views are likely required to ensure all aspects of your design can be seen. Our intellectual property solicitors will advise on the nature and extent of the representations necessary in the context of your particular packaging.
  2. File your application
    Once completed, your application must be filed with the IPO. Unlike other intellectual property rights, such as patents and, to a lesser extent, trade marks, the IPO does not scrutinise registered design applications. It will only check that the proposed design satisfies the formal requirements, such as that the design is not dictated by its function. The IPO will not search previous designs to ascertain that yours is new and has individual character. Third parties can subsequently challenge your registration. If successful, your design will be deemed invalid and removed from the register. Consideration should therefore be given as to whether there are pre-existing designs that may invalidate any subsequent registrations, or result in you being liable for infringement, at an early stage of packaging development. The earlier designs can be for products that are different to yours – what matters is how the design looks.
  3. Await registration
    If the IPO does not identify any issues with your application, your design will be published in the journal of registered design and you will receive a certificate of registration. You are then able to incorporate your registration number into your design and commercialise it as you wish, by selling or licencing it, for example.

How long does it take to register my packaging design?

The process for registering a UK RDR is relatively quick. You should receive a decision on your application within a few weeks. 

How much does it cost to register my packaging design?

The IPO charges a fee for registering a UK RDR. The fee depends on the number of designs you wish to register, and ranges from £50 for one design to £150 for up to 50 designs.

Since the chances of your design achieving registration, its validity and subsequent enforceability depend heavily on the design satisfying the relevant legal criteria and the application being properly prepared, it is sensible to enlist the help of experienced intellectual property solicitors to undertake the registration procedures on your behalf. Your solicitor’s fees will be payable in addition to those charged by the IPO.

How long does registered design protection last?

Your design registration will last for an initial period of 5 years but can last for up to 25 years when properly renewed.

Packaging design sometimes changes over time, to become more refined or in line with design trends. Whilst you can make small amendments to your design registration, such as to reflect a change of owner, any material changes to your design itself may necessitate a new design application.

The UK RDR system allows up to 50 designs to be included in one application. In addition to offering considerable costs savings, this means that it may be possible to include several variations of your design in your initial application.

Your application can be made in either colour or black and white. If colour is not an integral part of your packaging, it may be best to file in monochrome to prevent copycats from imitating your packaging but changing the colour in a bid to escape liability for infringement. The best filing strategy in any given case depends on the nature of the design. Our intellectual property solicitors will advise on how you can achieve the broadest protection for your packaging.

Alternative ways to protect your packaging design

Several other intellectual property rights may operate alongside your UK RDR to protect your packaging design. For example, copyright may protect its artistic features, such as graphics and pictures, and UK unregistered design right (UK UDR) may protect the shape and configuration of 3D packaging, such as a box. Whilst both of these rights arise automatically, they do not afford the owner a monopoly. To prevent others from using anything too similar to your design in reliance on copyright or UK UDR, you must prove that they copied it.

To obtain the widest possible protection for their packaging, many brands seek trade mark registrations for their most important designs, often alongside their UK RDRs. Like UK RDR, trade marks are monopolistic rights, meaning they afford their owner the exclusive right to use them in connection with the relevant goods. The longevity of trade mark protection is unparalleled by any other intellectual property right; it can last indefinitely if properly renewed.

The fundamental purpose of a trade mark is to indicate the origin of the goods, and an essential requirement is that the mark is distinctive and capable of distinguishing its owner’s goods from those of others. These hurdles can be harder to overcome in the case of shapes, such as bottles, than when the asset to be protected is a brand name or logo. If your packaging design does not satisfy the legal criteria for trade mark registration, any application you make will likely fail, or at least be vulnerable to cancellation.

Summary

In today’s competitive market, the role of packaging extends far beyond merely protecting a product. Product packaging plays an important role in your brand’s marketing strategy and, in turn, the success of your business. Well-designed, eye-catching packaging enables your goods to stand out from those of your competitors. It offers an invaluable means through which to interact with your consumers, conveying your brand identity and values to them. An asset as valuable as your product’s packaging must be protected from copycats. Focussed primarily on aesthetics, registered design rights provide a fast, cost-effective way of obtaining robust legal protection for your packaging and, in turn, your most valuable business asset – your brand.

About our expert

Jill Bainbridge

Jill Bainbridge

Intellectual Property Partner
Jill is Intellectual Property Partner at Harper James and has specialised in intellectual property protection, dispute resolution, brand and reputation management for over 20 years, having qualified as a solicitor in 1994. Prior to joining Harper James she was a Partner with Blake Morgan who she joined in 1999.


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