Your unique, pioneering packaging is the envy of competitors and a true stand-out from the crowd. But legally, is it safe from harm, asks Sarah Talland?
Packaging plays a crucial commercial role in the FMCG sector. It is the physical embodiment of your brand, an on the shelf way to tell your story. If you get your packaging right, it will catch your customers’ attention and persuade them that yours are the right products for them – whether that’s because of the colours, shapes, materials or functionality.
However, get it wrong and you could lose valuable market share or, worse, fade into the background on your retailers’ shelves.
As IP specialists, we are most interested in the issue of protecting market share. Our job is to make sure that all the elements that make your packaging unique are identified, so it differentiates your products and keeps your customers coming towards you and away from your competitors. This requires you to protect all the unique elements.
If you get your protection strategy right, you instantly minimise the risk of your competitors producing packaging so similar to yours that it confuses your consumers. This can cannibalise your sales or end with your competitors adopting your best ideas to boost their own products’ market appeal.
As with all aspects of intellectual property (IP), there is not a one size fits all solution. Different IP rights protect different aspects of your packaging:
Trade marks protect your brand, your name and logo and the colour schemes.
Designs or industrial designs protect the unique design elements you employ, perhaps the shape of your packaging or a particular graphic design.
Your designs could also protect the functional features of your packaging, for example an innovative opening or carrying mechanism. However, if these features could be described as totally original or ‘novel’, you may wish to explore patent protection. A good example of a patentable feature is Whitbread’s ‘widget’ which enabled them to sell draught quality beer in cans for the first time; predictably this led to many other brewers trying to use very similar technologies and it could have been disastrous if Whitbread hadn’t secured full patent protection.
Patents also protect any new packaging materials you have invented, for example materials that sustain temperatures or extend the time a product can stay fresh.
While these are the main rights, there are two more you may wish to consider.
Trade secrets protect any confidential information or ‘knowhow’ relevant to the production of your packaging, for example the way you coat or treat your materials or your manufacturing processes.
Copyright protects the artistic elements of your packaging, any unique illustrations, graphics, or patterns.
It’s important to say the protection process for a new product should never begin with making the requisite applications as soon as you’ve created or identified something unique. Given how crowded the international FMCG market is, you should always either conduct a clearance search (for trade marks) or some form of Freedom to Operate analysis (for patents and designs) when you have a new idea.
These searches identify that the elements you want to use don’t already exist which would leave you open to potential infringement action. Yes, this is one more thing to do but given the cost of producing the volume of product you’ll need to enter your chosen markets, how much could it save you if you find out at the 11th hour that you can’t use these products because you could be hit by an expensive infringement action?
Let’s leave on a more positive note. Protecting your IP rights can also open brand new additional revenue streams. Once you own your IP, you can explore possible licensing deals, enabling other designers, manufacturers, and other parties to use your ideas in return for a handsome royalty.
Tel: +44 (0) 203 005 00 10
Email: sarah.talland@potterclarkson.com
Sarah Talland is Partner, Chartered Trade Mark Attorney, at Potter Clarkson
