Q) I am the owner of an independent brewery.  The demand of the product keeps growing which we are delighted about. However, whilst we have trademarked our name, part of the distinctiveness of our product is the bottle that it comes in.  We are worried that competitors are starting to realise the appeal of our packing and might start to do something similar.  Is there any way that I can protect the packaging as a trade mark?

A) In the UK and many other countries, the appearance of a product or its packaging can be registered as a trade mark, and registrations of bottle designs are not at all uncommon.

However, the registrability of a particular bottle design will depend on the extent to which it stands out from the crowd, and on whether consumers are likely to attribute trade mark significance to it (its distinctive features might solely be attributed to decoration or technical function).  Securing a registration is therefore not always straightforward.

Great care is also needed to ensure that any registration secured actually protects the particular design features for which protection is sought.

It is thus advisable to consult a specialist trade mark attorney before applying to register your bottle design.  They can advise you on the likelihood of registrability objections arising and the chances of overcoming them.  They can also advise on the scope of protection that a registration would confer, on other (possibly more appropriate) options for preventing imitation of your design (including protection available under copyright, registered design and passing off laws), and on protecting other aspects of your branding (e.g. your logo).  And most attorneys will provide initial advice for free.

First published in the Financial Times, March 2013