Why to obtain the protection for product packaging?
The most "popular" items the companies and entrepreneurs wish to obtain the protection for are brands, logos, words and slogans. However, the companies increasingly need to protect the unique shape of the product – the result of design and marketing efforts - that just like a logo, can distinguish the products of one manufacturer from the mass of similar products on the store shelves. Certainly, the more funds are invested in the development of the shape and design, the more clear is the motivation to protect this shape against unfair copying.
How a product shape can be registered?
The exclusive rights in a particular packaging can be obtained as part of the registration of a three-dimensional trademark or through patenting an industrial design. There are significant differences between them, especially in the registration procedure and in the scope and validity period of protection. Your choice will be governed by these differences.
Product shape as a trademark
The Civil Code of the Russian Federation permits the registration of a three-dimensional designation as a trademark, along with verbal (only a word or phrase), visual (only a picture) and combined (word + picture) designations, as well as with such specific marks as sound or color. Upon the registration results, you will receive a trademark certificate. This certificate will contain all the projections you specify in the application.
The main thing when registering a product shape as a trademark is actually originality. If the reason for choosing the shape is functionality, the packaging is a non-alternative or a traditional one, the registration will be denied due to the lack of distinctive character. For example, you can't register traditionally shaped wine bottles, cream jars, etc.
The Civil Code prohibits the registration of the trademarks "...representing a shape of goods that is defined exclusively or mainly by the properties or intended purpose of the goods...".
Actually, Rospatent rather unwillingly registers any three-dimensional trademarks, often rejecting the registration of really unique packaging. When you receive a notification of the expert commission (provisional refusal), you certainly can try to prove the distinctive character, providing the expert commission with a huge set of documents evidencing that your product shape is promptly recognizable by Russian consumers, causing the association with you as a manufacturer, but there's no guarantee that these arguments will convince the expert commission and the decision on registration will be made.
That is why we recommend you rather to choose the registration of a product shape as an industrial design. And to register the main (dominant) packaging elements – images, slogans, and the brand itself as a trademark.
Product shape as an industrial design
An industrial design is, according to the Civil Code of the Russian Federation, "a solution for appearance of a product of industrial or handicraft production". Upon the registration results, you will receive a patent for industrial design. It reserves special, unique external features of the product, its aesthetic properties (texture, contours, lines, color range, configuration, etc.) In the application, you specify the description of the product, its essential properties (in free form), and attach the projections of the product (top, side, bottom, front, back) in several copies. You can submit several color solutions for packaging in one application, as options for the industrial design.
A patent differs from a trademark in its nature, it is the result of creative activity obligatory having an author to be specified in the register. A trademark, as a mean of identification, does not have an author formally.
The trademark certificate is valid for 10 years, it can be extended an unlimited number of times, each time for 10 years. For this purpose, you have to pay the state duty by yourself or through your patent attorneys (from 20 000 rubles) and submit an application for extension to the office.
A patent for an industrial design is valid for a maximum of 25 years. Formally – 5 years, you have to extend it every 5 years (up to 25) years, every year – to maintain. Certainly, it is a disadvantage of industrial designs, since the trademark right can exist for an indefinite period, and the patent right is always limited.
Besides, you should remember that the expert examination of the application for an industrial design will check whether the shape is new and original. "Novelty" means that this shape should not be used anywhere else. "Originality" means that the shape is of the creative, non-standard nature.
The advantage of an industrial design – its holder may be an individual, a trademark holder should be only a legal entity or an individual entrepreneur.
What should be chosen?
In order to increase the chances for registration, we recommend you to try to patent the product shape as an industrial design, if it is really new and original. However, if you want to protect the whole package, containing in addition to the shape the other important for you elements, images, symbols, slogans, the brand itself - for the highest legal protection of the packaging of your product, we recommend you to submit several trademark applications and one or more applications for industrial designs. This will protect you as much as possible against copying your product on the market, and against possible claims to you from third parties.
When monetary, human, time investments in the product design are significant, we recommend you to use all the means provided for by our legislation to protect your interests.
Product shape patenting is a rather specific procedure having many features. It is necessary to determine the number of items able or should be registered, and it is also recommended to conduct searches in order to assess the chances for registration. Our patent attorneys having long-term experience – both in trademarks and industrial designs - will help you to understand the situation and to choose the best strategy. Give us your contact details and we will contact you