Businesses should consider all relevant protection available in the United Kingdom. Although unregistered rights are immediately available and incur no upfront cost, registered rights are more straightforward to establish and enforce
Consumers are nowadays presented with an overwhelming array of varied representations in the appearance of products. For this reason, sophisticated businesses are prepared to invest more in the appearance of their products and associated packaging in order to increase their appeal to the general public. It is therefore vital that businesses adopt a combination of imaginative visual elements and present them in an exclusive manner, so as to distinguish their products from those of competitors. Businesses seeking to protect a combination of visual elements in the outward appearance of products or packaging will need to protect them as designs or get-up. This article considers the different forms of protection available for the design and get-up of a product and its packaging in the United Kingdom.
Designs and get-up
A ‘design’ is legally defined as “the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or its ornamentation”. There is no statutory definition of the ‘get-up’ of a product in the United Kingdom (which is known as ‘trade dress’ in the United States).
Both designs and get-up refer to the features of the visual appearance of a product, including its shape or packaging, colours, words, logos and any combination thereof. However, although part of a product can be protected as a design, only the overall presentation of a product can be protected as get-up.
Protection of designs in the United Kingdom is afforded by a variety of legislative regimes, such as design, trademark and copyright law. The get-up of a product enjoys similar protection, with additional protection under the common law tort of passing off.
Design and get-up protection can be achieved by acquiring a registered design, at both the national and Community level. In order to be registrable, a design must be new (meaning that it has not been disclosed more than one year before filing) and possess individual character (meaning that the overall impression it produces on the informed user must differ from the overall impression produced on such a user by any design which has been made available to the public).
UK legislation offers protection for both registered and unregistered designs. The registered design right can last up to 25 years, subject to payment of maintenance fees every five years. This is the same as the registered Community design, which secures protection throughout the European Union for a single design registration.
The registration of a design gives the registered proprietor the exclusive right to use it and to prevent any third party from using that design without consent. The exclusive right covers, in particular, the making, offering, putting on the market, import, export or use of a product in which the design is incorporated or to which it is applied, or the stocking of such a product for these purposes.
The UK unregistered design right arises automatically upon the creation of an original design and can last for up to 15 years. It provides the owner with the exclusive right to reproduce the design for commercial purposes. In contrast, the unregistered Community design provides protection for only up to three years and is therefore of value solely to products with a short market life. An unregistered Community design confers on its holder the right to prevent unauthorised acts in relation to registered designs only if the contested use results from copying the protected design. It therefore prevents copying, but not independent creation.
Trademark law in the United Kingdom is harmonised with trademark law in each EU member state. According to Section 1 of the UK Trademarks Act 1994 (which mirrors Article 4 of the EU Community Trademark Regulation), the shapes of goods or their packaging are registrable as trademarks as long as they are capable of distinguishing the goods or services of one undertaking from those of others. In order to be protected as trademarks, designs and get-up must either be inherently distinctive or have acquired distinctiveness through use. Regarding the assessment of distinctiveness of three-dimensional shapes, the position in Europe has changed over time. The initial stance of the European Court of Justice was that since the EU Community Trademark Regulation makes no distinction between different categories of trademark (Philips, C-299/99), a stricter test should not be applied (Linde, C-53/01).
However, in more recent cases the court has acknowledged that the relevant public’s perception is not necessarily the same in the case of a three-dimensional mark as it is in the case of a word or figurative mark. The reason is that average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element.
The registration of the shape of a product or its packaging is also subject to a special provision under the UK Trademarks Act and the Community Trademark Regulation. By virtue of Section 3(2) of the act (and Article 7(1)(e) of the regulation), signs are excluded from protection if they consist exclusively of a shape which results from the nature of the goods themselves, a shape which is necessary to obtain a technical result or a shape which gives substantial value to the goods.
A number of hurdles must thus be overcome in order for the shape or packaging of a product to be protected as a trademark. Typically, the applicant will need to establish acquired distinctiveness by way of extensive use in the relevant territory.
Copyright and passing off
Designs and get-up can also be protected by copyright in the United Kingdom. Copyright is governed by the Copyright, Designs and Patents Act 1988. In certain circumstances an original design or get-up which can be characterised as artistic can attract copyright protection if it falls within the terms of Section 4 of the act. This section defines ‘artistic works’ as including “(a) a graphic work, photograph, sculpture or collage, irrespective of artistic quality (b) works of architecture. . . and (c) works of artistic craftsmanship”.
Copyright will also protect documents detailing the design, as well as any artistic or literary work incorporated within the finished product. However, there are limitations on protecting against unauthorised reproductions of articles made from design documents. Copyright arises automatically in the United Kingdom and lasts for 70 years following the death of the author. However, the industrial reproduction of artistic works used as designs will be limited to 25 years from the year that they are first marketed. There is currently no harmonisation of copyright protection across Europe.
The get-up of a product can also be protected in the United Kingdom under the common law tort of passing off. Passing off can occur when a company adopts the same or similar get-up or appearance as used by another company, or by implying to the public that its goods or services are connected with those of the other company. In the United Kingdom, for example, a plastic squeeze container which, in size, shape and colour, resembled a lemon bearing a green triangular label with the word ‘Jif’ was held protectable under passing off (Reckitt & Colman Products Ltd v Borden Inc). In order to establish passing off, three elements – often referred to as the ‘classic trinity’ – must be proved:
- The get-up of the product has acquired goodwill or a reputation in the market;
- A misrepresentation, which need not be intentional, has taken place or is likely to take place; and
- Damage has been caused or is likely to be caused as a result of the public’s deception.
Designs and get-up can be protected through a combination of one or more of these means, provided that the relevant legal rights can be established. There is no specific rule prohibiting protection under one regime if protection could be claimed under another, other than with respect to copyright and UK unregistered designs. Therefore, businesses can claim protection for their products simultaneously under different regimes. Each form of protection has advantages and disadvantages. For example, the registered design right is cost effective and time efficient. The lack of substantive examination can afford protection to designs that are not particularly distinctive, as long as it can be proved that the design is new and has individual character. However, there is a time limit on their protection (25 years) and it is often difficult to prove that a similar design does not create a different overall impression on the informed user, who is considered to have a higher level of attention than the average consumer.
In the case of copyright, protection formalities are more straightforward, as there is no registration process in the United Kingdom and the right arises as soon as a protectable work is rendered into a tangible form. Duration is also generous and can last for the life of the author plus 70 years, subject to exceptions. However, enforcement of copyright can be difficult. This is because the product in question must first qualify as an artistic work in order for copyright to subsist. Next, it must be shown that the infringing product is substantially similar to the protected work, and that the infringer had access to the protected work, in order for copyright to be enforceable.
Unregistered design rights will arise automatically, but are short in duration and narrow in protection.
Trademark registration is highly valuable, in that it can provide protection indefinitely. However, it is often very difficult to secure registration and prove that a combination of visual features is distinctive, since the average consumer is often not sufficiently educated to perceive the get-up of a product as an indicator of origin. Similarly, in passing off, even if a marketer can establish the requisite goodwill, it is still difficult to establish the likelihood of a misrepresentation or damage, provided that it has already occurred.
Businesses should consider all relevant existing protection available to them. While unregistered rights are immediately available, it is advisable that businesses seek to obtain registered rights since these are more straightforward to establish and enforce. In the case of designs or get-up where distinctiveness is an issue, design registration should be considered first and trademark protection at a later stage, once the requisite distinctiveness has been acquired through use.
This article first appeared in World Trademark Review. For further information please visit www.worldtrademarkreview.com.