The EU General Court has upheld a decision that a Community registered design featuring three sizes of drinks can, registered by Ball Beverage Packaging, is invalid on the basis that it does not have individual character over earlier similar drinks can designs on the market.
IP protection for food and drinks packaging is a significant asset and prevents others from copying valuable designs. For example, Coca-Cola has a registered EU trade mark for its distinctive bottle shape, and Red Bull has a Community Registered design for its can design. However, it is important to consider very carefully what you are seeking to protect, and the preferred type of protection i.e. as a trade mark or as a registered design. In particular, registering the shape of packaging as a trade mark is not straightforward: Voss’ EU trade mark for the shape of its water bottle was cancelled on the grounds that it was not distinctive.
Whilst obtaining design protection for packaging is less complex, this latest decision affirms the importance of getting the representation of your design registration right (as previously seen in the Supreme Court’s decision in Trunki). For example, you should avoid depicting multiple designs in one registration. Instead, you should consider filing multiple design registrations together (there is a reduction in fees when doing so), where each registration features only one, not multiple, designs: such as a simple line drawing in one registration to protect the shape alone, and a photograph in another registration to protect the detail on the packaging. Further, you should ensure that different views of your design are registered, otherwise they will not be protected – what you file is what you get.
General Court’s refusal to protect the design as a ‘group of cans’
An interesting aspect of this case was that the registered design depicted more than one product – it featured three drinks cans in different sizes as part of one design:
The registered design
A Community registered design can feature and protect a combination of products, but only where they have a unitary object, i.e. they are linked by aesthetic and functional complementarity and are usually marketed as a unitary product, such as cutlery, or a chess board and its pieces.
In this case, the General Court decided that the registered design (three cans of different sizes) did not amount to a unitary product because it did not satisfy the above conditions. Accordingly, Ball Beverage Packaging couldn’t rely on the fact that there were three cans in the registered design as a differentiating factor to can designs already in the market.
The design did not produce a different overall impression on the informed user
For a design to be registrable and valid it must have, amongst other things, individual character i.e. it must produce a different overall impression on the informed user (in this case a person in the drinks industry who was responsible for bottling beverages) from the impression produced by any design made available to the public prior to the application date (or date of priority if claimed). Any differences that are insufficiently significant will not affect that overall impression.
The earlier designs
The General Court decided that the differences between the registered design and the earlier designs (above) were insignificant and had no impact on the overall impression of the informed user. In particular:
- neither the actual dimensions nor the capacity of the can could be deduced from the representation of the cans in the registered design;
- even if the height/width ratio was not approximately identical in the registered design and earlier designs, that did not constitute a difference in the overall impression produced on the informed user; and
- although the informed user, a bottler in this case, would take into account the size (capacity) of a can, that did not affect the comparison of the overall impressions produced by the designs being compared, as the capacities of cans (which affects their size) were, to a certain extent, standardised. Further, a ‘sleek’ characteristic of the cans represented in the registered design was a marketing concept and was not a characteristic contributing to the creation of an overall impression on the informed user.
The General Court’s decision affirms the importance of getting the representation of your design registration right. Whilst it is possible to apply for one design with multiple products in it, it is rare that this will be considered a ‘unitary product’, unless the products contained in the design are aesthetically and functionally complementary, which is very unlikely in the drinks industry.