Product-packaging protection under ”Trademark
Nowadays, customers are exposing to thousands of similar products together with variety of advertisements. A creative and distinguished product-packaging would definitely attract more customer’s attention and therefore bring about more income and popularity to a company among its peers.
Following the above, the protection of product-packaging is not exclusively limited to a sole branch of Intellectual Property rights. Increasingly, companies are benefiting from the trade mark protection system which provides them with product-packaging exclusive and unlimited rights. This article discusses about legal requirements of protecting product-packaging under trade mark law.
Today, a new-founded feature of trademark which protects product-packaging is known as “trade dress”. Product-packaging trade dress is composed of the overall combination and arrangement of the design elements that make up the product-packaging including graphics, layout, color or color combinations. The afore-said items should be considered within together, notwithstanding which are subject to protection and which are not. If customers recognize a product according to their trade dress and packaging, this product-packaging is adequately worthy of registration. It should be taken into consideration that product-packaging trade dress is protected if it is “distinctive”. The mentioned feature includes either if the product-packaging is inherently distinctive meaning not similar to any other product-packaging in the market and eligible for trade dress trademark protection as soon as it is presented to the market because of its exclusiveness; or the product-packaging has acquired its distinctiveness (secondary meaning) through similar practices during a period of time. Consequently, the legal protection will be applicable only to secondary meaning when in the mind of customers the primary significance of the product-packaging trade dress is to identify the producer rather than the product itself. The second inevitable specialty of product-packaging trade dress in order to receive legal protection under trademark law is its “non-functionality”. Only the non-essential qualities of a product are protected under the protection of the trade dress. A feature is “functional” and cannot serve protected under trademark law if it is essential for the use or purpose of the article which is called “Utilitarian function” or if customers buy the products due to its eye-catching and appealing appearance which is called “aesthetic function”.
Finally, it may be concluded that acquiring trademark law protection for a product-packaging is subject to variety of conditions which are not easily provable by claiming party. It should be noted that according to the legal system of countries such as Iran, Germany, Japan etc., obtaining trademark law protection requires trademark registration of the product-packaging. Sole utilization of the products is not merely enough to apply trademark protection.
 A. Handleman, Jeffery, Stretching Trademark Laws to Protect Product Design and Packaging, p.1
Respectfully submitted by Dr.Mahnaz Mehrinfar & Pegah Sharifzadeh