Image conscious

Big splashy logos are so last season. The new look is stylish packaging, say Finnegan LLP’s Julia Anne Matheson and Anna Balichina. But how should you protect packaging, and does the resulting cover provide a viable alternative to trademark legislation?

A review of today’s retail shelves suggests a seismic shift in the approach to branding. Unlike the 1990s trend that dictated that the bigger the brand name the better, today’s brand owners minimise the visibility of even the most prominent brand names in favour of packaging that offers its own aesthetic appeal.

This new focus has proven to be a commercially sound move. Consumer studies have repeatedly demonstrated that the quantity of a product consumed increases significantly when the product also serves as a design accessory that is displayed in plain sight rather than hidden away in a closet. For example, global health and hygiene company Kimberly-Clark recently introduced a new line of Kleenex tissues in unusual oval-shaped boxes with graphics in a range of colours and styles to appeal to all types of consumers.

A new look for IP
But, if huge splashy logos are no longer in fashion, what does this trend mean for traditional branding strategies? Just as with work marks, not all trade dress is created equal and the scope of protection for product packaging and for product configuration is very different.

Product packaging refers to the box, container or bottle containing a product. The shape of the Haig & Haig ‘pinch’ whisky bottle, the colour combination of a Tiffany box and ribbon, and the minimalist design of the Chanel No 5 label are all examples of protectable trade dress. Trademark law recognises that consumers are accustomed to viewing product packaging as an identifier of source. Accordingly, product packaging can be entitled to protection immediately upon adoption if it is sufficiently unique (eg ‘inherently distinctive’) to stand out from the competing brands.

STUDIES DEMONSTRATE THAT THE QUANTITY OF A PRODUCT CONSUMED INCREASES WHEN THE PRODUCT ALSO SERVES AS A DESIGN ACCESSORY

Product configuration, on the other hand, refers to the design or appearance of the product itself. Because product configuration is often part of a product’s inherent function or commercial value, the US courts have set a higher bar for protection. For example, in its milestone decision in Wal-Mart Stores, Inc v Samara Brothers, Inc the US Supreme Court concluded that product design (as opposed to product packaging) could never qualify for trademark protection in the absence of evidence of acquired marketplace distinctiveness. Because consumers faced with a cocktail shaker in the shape of a penguin are more inclined to view this design as aesthetically appealing rather than brand identifying, they have to be educated through targeted advertising and marketing efforts to recognise product configuration as a trademark.

Building a strategy
The ultimate success of any packaging strategy will largely depend on the consistency and uniformity of the overall look and feel of the product line. If the use of different colours, shapes and designs strips the product line of a consistent overall visual image, courts will not grant packaging trademark protection. If, on the other hand, the packaging uses a consistent set of colours and shapes, eg the sea-green, frosted glass typically associated with Clinique (pictured left), it is far more likely to be successful.

But beware: functionality is a major barrier to obtaining product packaging trade dress protection. If a particular element or combination of elements that comprise packaging contribute to the product’s durability, improve the efficiency of or lower the cost of manufacture, or facilitate the consumer’s evaluation of a product’s features, these elements will be considered ‘functional’ and unsuitable for trade dress protection. In addition to the classic utilitarian functionality, trademark law also recognises a so-called aesthetic-functionality obstacle to trade dress protection. If consumers view product packaging as aesthetically appealing as opposed to source identifying, the packaging will not be protectable. For example, a box in the shape of a heart offered at Valentine’s Day is decoratively appealing and, accordingly, functional rather than brand identifying. The shape of the box plays a leading role in the commercial success of the product, and prohibiting imitation of this feature would impede competition. So, both utilitarian and aesthetic functionality should be taken into account when developing product packaging.

Generating secondary meaning
As hard as it is to come up with a product packaging that is inherently distinctive, this is not the toughest part of the marketing battle. Where trade dress is not inherently distinctive, educating consumers that new packaging identifies the brand is as important, as costly and as difficult a task as the creative design process itself. Courts faced with deciding whether to grant what is, in essence, a monopoly on a style of packaging will focus on sales volumes, advertising budget and advertising content.

But high sales volumes and a large advertising budget alone will not suffice to prove secondary meaning. When developing the promotional campaign, consumers’ attention needs to be drawn to specific elements of product packaging solely as a means of identifying the brand. By prompting consumers to look for a specific feature because it makes the product better than its rival’s, brand owners, in effect, concede that the trade dress they are promoting is functional as opposed to source identifying.

The economic downturn presents a big question: is the new trend here to stay? Will companies continue to invest in distinct packaging or will they refocus on core brand names in light of declining advertising budgets? If times continue to be tough, we might very well see brand owners turn back to tried-and-true brand names that have stood the test of time.


Julia Anne Matheson is a partner and Anna Balichina is a trademark law clerk at US law firm Finnegan LLP


This article first appeared in IP Review, issue 26