INTA: How trademarks can make trade dress impress
Trade dress—the design, shape and appearance of a product and/or its packaging—can be protected using a variety of IP rights including copyright, patents and design.
Trademarks are one of the more difficult ways in which to protect trade dress, but also one of the most powerful, as discussed at the panel: A cross-Atlantic view of trade dress protection convergence and divergence in common law and civil law systems.
Moderator Paolo Lazzarino, partner at ADVANT NCTM in Italy, explained that trade dress has become a more important “purchase driver for customers who are attracted by a sensory experience made of colours, shape, texture.” Customers, in his view, are becoming “more visual and less lexical”, which has important implications, especially for fast-moving consumer goods but for a host of other industries too.
Different requirements
In the US, there is “no inherent distinction for product shape”, he said, while in the EU, trade dress requires a “significant departure of the shape from the customs or norms of the sector”.
Brian Darville, senior counsel at Oblon, McClelland, Maier & Neustadt in the US, underlined that “distinctiveness and non-functionality are the core requirements for protecting trade dress” in the US.
He highlighted a few key points from US case law, notably that a consumer survey “is one of the most powerful tools” to demonstrate acquired distinctiveness, and that product features claimed in a utility patent are deemed to be inherently functional.
In South Korea, there is “no explicit provision for trade dress” in that country’s trademark law, and generally trade dress is protected via 3d marks provisions, said Judge Kwangnam Kim of the Seoul High Court. Generally trade dress can be enforced either via the Trademark Act or under unfair competition law, and “trademark protection is very strong but very difficult”, he said.
Key takeaways
Pamela Weinstock, managing counsel for IP at jewellery brand Tiffany & Co, provides practical advice for counsel working in-house at brands that want to protect their trade dress.
“Your role is to work with your teams and get the best IP protection you can,” she said. But getting trade dress protection can be time and resource intensive, she cautioned.
Brands, added Weinstock, should focus on understanding whether there are “core products that have been [in the portfolio] for some time that will continue into the future” and “the various elements that are worthy of protection, [and] why are they unique for that particular type of product.”
Weinstock further advised that you “may want to explain some of the legal concepts to your design team” and, in the case of new products, to “schedule regular meetings with your design teams to discuss…what kinds of inspiration they have or what ideas they have” to ensure that they’re not creating any unnecessary risks.
Legal counsel should “get in there early”, she said, to “make sure everything is compliant” before the company heads start “really falling in love with a product that may have a legal issue”.
And once you have your protection, it’s important to “put into place watches and enforcement to make sure that others aren’t using something too similar” to your product, she said.
