Intellectual Property Office is an operating name of the Patent Office www.ipo.gov.uk

Registered protection for get-up and trade dress -

the IPO perspective

Nathan Abraham

Practice Manager & Ex Parte Hearing Officer

Intellectual Property Office

nathan.abraham@ipo.gov.uk

Intellectual Property Office is an operating name of the Patent Office www.ipo.gov.uk

What does the ‘get-up’ actually mean?

“Get-up consists of the configuration of the individual elements in which a product is shown, that add value to the product itself.

Those elements may inter alia include the shape, colour or overall packaging of products, the displays attending those products, or the décor or environment in which a service is provided”

Intellectual Property Office is an operating name of the Patent Office www.ipo.gov.uk

Example 1 (Design)

Intellectual Property Office is an operating name of the Patent Office www.ipo.gov.uk

Example 2 (Trade Mark)

Description: The mark consists of the colours Red Pantone SHL005, Yellow Pantone SHL003, and Pantone White, applied to the packaging for the goods. The distribution and ratio of the colours to each other is 40/20/40, whereby the colour red runs horizontally above the colour white and the colour white runs horizontally above the colour yellow, forming a striped whole.

Good in class 3 – shoe polish

Intellectual Property Office is an operating name of the Patent Office www.ipo.gov.uk

Example 3 (Design)

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Example 4 (Design)

Intellectual Property Office is an operating name of the Patent Office www.ipo.gov.uk

Trade Marks vs Designs

• A registered trade mark is a symbol or sign created in order to distinguish the products of one trader from those of other traders

• A registered design protects the appearance of the whole or part of a product resulting from the configuration of features such as shape, contour, colour and texture

Intellectual Property Office is an operating name of the Patent Office www.ipo.gov.uk

Trade Marks vs Designs

Registered Design Registered Trade Mark

Can protect get-up and trade dress?

Yes Yes

Cost £40 £200

Processing Time 2-4 weeks 4-8 weeks

Examination Scrutiny

Light Rigorous

Intellectual Property Office is an operating name of the Patent Office www.ipo.gov.uk

Trade Marks - Petrol Station livery

UK Trade Mark Application No. 1469512 The mark, here depicted in heraldic shading, consists of the colour green as applied to the exterior surface of the premises used for the sale of the goods

Intellectual Property Office is an operating name of the Patent Office www.ipo.gov.uk

Trade Marks - Petrol Station livery

BP’s market research confirmed that:

• There was little differentiation between BP and its competitors apart from colour

• Colour was intrinsically more important than architecture

• BP was the best recognised brand in the UK, the difference being colour

• BP wanted to “’own’ the colour green just as Coca Cola ‘owns’ red

Intellectual Property Office is an operating name of the Patent Office www.ipo.gov.uk

Trade Marks - Copycat packaging and comparative advertising

• L’Oreal SA vs Bellure NV

• ECJ ruling in case C-487/07 confirmed scope of section 5(3) UK TMA

• Also confirmed Bellure’s use fell outside of concessions permitted by the Comparative Advertising Directive

• Court of Appeal accepted ruling ([2010] EWCA Civ 535)

Intellectual Property Office is an operating name of the Patent Office www.ipo.gov.uk

Trade Marks - Copycat packaging and comparative advertising

“...an advertiser who states explicitly or implicitly in comparative advertising that the product marketed by him is an imitation of a product bearing a well-known trade mark presents ‘goods or services as imitations or replicas’ within the meaning of Article 3a(1)(h) (CAD). The advantage gained by the advertiser as a result of such unlawful comparative advertising must be considered to be an advantage taken unfairly of the reputation of that mark...” (ECJ paragraph 80)

Intellectual Property Office is an operating name of the Patent Office www.ipo.gov.uk

Trade Marks - Colour per se

No. 2020876A • The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods. • Proceeding because of distinctiveness acquired through use and survey evidence • “Chocolate in bar or tablet form”

No. 2376879 • The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods. • Proceeding because of distinctiveness acquired through use • “Chocolate in bar and tablet form; chocolate for eating; drinking chocolate; preps for making drinking chocolate”

Intellectual Property Office is an operating name of the Patent Office www.ipo.gov.uk

Design Protection - a suitable alternative?

• Registered Design applications up by around 30% on two years ago

• But, other than in terms of raw input, little evidence to show other correlations between trade mark and design filings

• Is registered design protection compatible with branding?

Intellectual Property Office is an operating name of the Patent Office www.ipo.gov.uk

Design Protection and infringement rights - IPO Decision O/074/12

• UK Trade Mark Registration No. 2486099

• Earlier Community Trade Mark numbers 6239693 and 6719744

and • Earlier registered Community design number 691050-004

Intellectual Property Office is an operating name of the Patent Office www.ipo.gov.uk

Design Protection and infringement rights - IPO Decision O/074/12

“I remind myself that the average consumer in trade mark law is deemed to be reasonably observant and circumspect. That is to say he or she is deemed to be less knowledgeable and observant than the informed user under registered design law. This means that imperfect recollection has a bigger role to play under trade mark law than under the law governing registered designs.” (Paragraph 59)

Intellectual Property Office is an operating name of the Patent Office www.ipo.gov.uk

THANK YOU

nathan.abraham@ipo.gov.uk