Community Design Registrations for Packaging?
"The case demonstrates some of the difficulties of proving passing off, particularly at an interim stage of proceedings. Proving a likelihood of deception (or, preferably, actual deception) based merely on colours and slogans is difficult, especially where the allegedly infringing product is also branded with dissimilar word trade marks.
Masterfoods' case may have been easier if its registered rights were more solid, rather than having to rely on packaging registrations from 1995.
Producers of consumer goods may therefore wish to consider:
- Registering Community Designs, which now provide a quick and cost effective method of obtaining registered rights (including in colour) for each year's range of new packaging. The "overall impression" test for infringement of amRegistered Community Design may well provide additional protection against copycat or look- alike products;
- Applying to register as colour per se marks the key colour/s of their
product packaging. These registrations have been affirmed by the European Court of Justice in limited circumstances; and
- Reviewing their IP portfolio, to ensure that trade mark and design
registrations for logos and packaging are up to date: there is little point to
maintaining old trade mark registrations for packaging that has not been used
for five years, as the marks will be vulnerable to revocation for