Product design (packaging design) as a trademark

Is it possible to register a product design (packaging design) as a trademark?

In 2014, the Coca-Cola Company filed an application to the European Patent Office (OHIM) for registration of a trademark for the design of a glass bottle and aluminum cans.

The European Patent Office, located in Alicante, Spain, refused registration of these applications, citing the fact that the container in which the drink is sold does not have any pronounced differences.

Coca-Cola disagreed with this decision and appealed to the court in Luxembourg, which confirmed the department’s stand and refused to satisfy the claim. The court decision stated that the bottles and cans, provided by the company, do not have sufficient distinctive features to be considered as a trademark. “It’s just a variant of design and package, which does not allow the average consumer to distinguish these bottles from others.”

The Coca-Cola representatives conveyed that they do not intend to be content with this decision, and that they will challenge it in order to obtain recognition of the shape of the bottle as a trademark.

It should be noted that this is not the first time in Europe, when a large manufacturer wants to register the very form of a product as a trademark.

Prior to that, Nestle was refused registration of Kit Kat tiles, the so-called “four fingers”, by the Supreme Court of the United Kingdom. Even the argument about the fact that this product has been on the shelves on the British market for more than 80 years since 1935 did not help.

A similar situation is occuring in Russia. For example, Apple Inc. tried to register a design of a tablet as a trademark in the Patent Office of the Russian Federation (Rospatent). In 2012, Rospatent refused registration, stating that: “the designation claimed by [Apple] is a schematic representation of goods, which is claimed for registration as a trademark for the designation of these goods, and lacks distinctiveness.” The company’s argument that it has been distributing tablets in Russia for a long time has not helped, since (it was stated that) “minor differences in device sizes, sizes and location of a “joystick” (or lack thereof) are not an essential discrepancy criterion in the process of perception thereof.” Even the public survey, whose results were found biased, did not help, since the question posed to the respondents was found to be a leading one:

“Please tell me, do you associate this image with Apple Company products, such as the iPad, iPhone, iPod?”

In this case, in accordance with Rospatent was guided by the provisions of sub-item 4 item 1 of Article 1483 of the Civil Code of the Russian Federation, which prohibits registration of designations that lack distinctiveness and constitute a form of goods as a trademark.

CONCLUSION: Worldwide practice assumes that even if the company’s products are world-renowned and sold for a long period of time, it is impossible to register the product design as a trademark.

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