In recent years the Swiss courts have established a restrictive approach in relation to the protection of three-dimensional marks which merely consist of the shape of a product. Usually, such marks can be registered only if the trademark owner can demonstrate that the shape has acquired distinctiveness. This practice is based on the reasoning that the shape of a product identifies the product itself, rather than its origin. Accordingly, the average consumer would perceive the particular shape as a specific design only and not as an indication of the product's source. In a recent decision, the Federal Supreme Court addressed the issue of whether this restrictive approach should also apply to the packaging of a product.

The court held that the shape of a product and the packaging of a product should basically be treated in the same way. Although the packaging of consumer goods may be an important marketing tool, this does not necessarily mean that consumers can recognise an indication of source merely on the basis of the packaging. If the packaging features no graphical or word elements, an indication of source cannot be assumed. Although the court took into account the fact that consumer perceptions are changing, it maintained that this did not necessarily mean that the average consumer would now be used to perceiving packaging as a trademark. This may already have happened with respect to certain products (eg, perfumes), but not for the vast majority of consumer goods. Furthermore, in order to be protectable, packaging must differ strikingly from the packaging that is usual in a specific market. In the case at hand, this was denied for the following packaging used for various kinds of seafood.

The court noted that the fact that the packaging had won design awards did not help the trademark owner. The court held that the requirements for protection are different in design law compared with those in trademark law. Accordingly, even for packaging with a highly sophisticated design, gaining protection under trademark law remains extremely difficult.

For further information on this topic please contact Roger Staub at Froriep Renggli by telephone (+41 44 386 6000), fax (+41 44 383 6050) or email ([email protected]).