Gowling WLG (International) Inc - Russia
An effective way to fight counterfeit goods is by extending existing IP protection to a product’s packaging. In such instances, ‘packaging’ no longer refers to a container that safeguards products from damage and facilitates transportation, storage and sales – it is a crucial identifier of a product's authenticity, a unique means to attract consumer attention and build brands. Today, it plays a decisive role in a product’s marketing and advertising, as it can be distinctive, attractive and easy to remember. Registering packaging as a trademark gives the manufacturer the opportunity to obtain a competitive advantage over other manufacturers and to protect its goods against imitative and counterfeit ones.
Given that a product and its packaging and are often associated with a particular brand, counterfeit products tend to include both. In many cases, consumers will only realise that a product is counterfeit after it has been purchased and the package has been opened.
How to protect packaging
Packaging is the result of a creative process – the layout and label design are produced by designers and artists. It has novelty and originality, looks like a finished product and can therefore be protected as an industrial design in most cases.
Packaging and other marketing features (eg, labels, tags and stickers) usually have distinctive features and can be a way of identifying goods. According to Russian law, these types of packaging and marketing features can be registered as marks. In these instances, the determining criteria are distinctiveness and association with a product. These are usually identified with registered packaging (eg, candy and chewing gum wrappers, cigarette packs, boxes of tea and cartons of juice).
Distinctiveness is crucial for obtaining a 3D trademark in Russia. If the packaging is determined solely or primarily by the functionality of the product and is otherwise conventional and/or a single option for homogeneous goods, it is considered to lack distinctiveness and will be refused protection.
In order for a 3D mark to be eligible for registration, packaging must be memorable and unusual in design (ie, contain a sufficient degree of originality) and evoke an association with a specific manufacturer among consumers (eg, shape of bottles for alcoholic beverages and perfume).
The Russian Civil Code specifies the types of packaging that cannot be registered as trademarks. These include:
- packaging that is designed solely or primarily for functional purposes or the peculiarity of the product;
- packaging that is conventional, commonly accepted or the single option for this product; and
- packaging that is false with regard to the product that it states that it contains, or that is somehow deceptive to consumers.
Further, packaging associated with a product’s functional features can acquire a distinctive feature that is easily recognisable to consumers as long as it is produced by one manufacturer only. In this case, it is eligible for registration as there is an established identification with the manufacturer. It is important that the list of products in the application comprises what the packaging is intended to contain only.
Trademark owners can be assured that there is no infringement on another party’s rights when registering their packaging as a trademark – during the application process, the Patent and Trademark Office examines the mark in order to identity any potential similarities to previously registered and applied-for trademarks.
Along with the promotion of sales, there are distinct advantages to registering packaging for protection. It allows trademark owners to protect their marks more efficiently against unfair competition – in accordance with Russian legislation, no one has the right to use a third party’s mark or a designation confusingly similar to this with regard to goods and services without the owner’s authorisation. Legal actions against infringements can result in compensation of up to Rb5 million.
Further, when packaging is registered as a 3D mark, the owner simultaneously receives protection for all distinctive packaging elements. Subsequently, it may sign a licensing agreement and grant other manufacturers certain rights to use the mark for commercial purposes.
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