When registering product packaging or label designs, many businesses unknowingly undermine their own trademark protection. The critical error? They often include distinctive text like brand names in the applied mark. This is understandable because the name is typically the most important part, but if you want to protect your product packaging, including the brand name will significantly undermine the protection given the graphical elements.
Why your brand name can backfire?
A general principle in trademark law is that in figurative trademarks that contain graphics and text, the textual element is typically considered the dominant element in the mark. Here are examples of two random products
The most important thing to protect is of course the name. However, product packaging and labels can also have significant brand awareness. When protecting them, you should strip them clean of any text to allow the graphical elements to enjoy maximum protection. If you leave the texts and brand names in the mark, they will be the primary object.
When a trademark contains graphical and textual elements, the text is usually considered dominant as it has a stronger impact on the consumer. This is because people refer to trademarks more naturally by their names than describe their figurative elements. In a recent decision, the EUIPO analysed the similarity of two wine labels containing the image of an old man.
In the end, there was no likelihood of confusion. One reason for this was that the other mark had textual elements “Don Antonio” and “TENUTA ULISSE”. The EUIPO’s Board of Appeal stated that “despite its comparatively small dimensions within the contested mark, the expression ‘DON ANTONIO’ (and eventually also the expression ‘TENUTA ULISSE’) will be used by the relevant public to identify the applicant’s wines, especially because the figurative elements will not be pronounced.” The verbal elements added a layer of distinction between the two marks.
The case illustrates perfectly that if you want to optimise the protection given to a graphical element, such as a package appearance or layout, it is better to strip the mark out of all verbal elements.
Below is an example of how Mars Incorporated has registered its Cesar dog food brand. The product is on the left, and trademark registration on the right.
Here’s another example of how Diageo has protected their Johnnie Walker bottle:
Any text elements, such as the “Johnnie Walker” on the gold and red stripe would dilute the protection given to the visual elements in the mark.
Other pitfalls
Protecting labels and product packaging is difficult. If you take all the textual elements out, the main question is whether the remaining graphic elements are sufficiently distinctive enough on their own. If they are not, the mark cannot be registered. In such a case, adding a distinctive element such as a brand name will make the mark registrable, but the registration does not optimally protect the figurative elements.
Also, a typical product package or label can contain many distinctive figurative elements. One issue that must be decided is whether these are included in the same application, or whether it is better to do two or even three separate applications. For example, the Johnnie Walker bottle above contains the gold and red stripe as well as the walker image. The best protection would require three separate applications. One for each element (that’s two) and one for their combination.
Of course, smaller companies must always be mindful of the costs, so the decision of how to register a package or label must be made on case by case basis. A trademark attorney can be very helpful in helping to identify those brand elements that should be protected.
Conclusion
While it is certainly true that in most cases the name and logo of the product should be registered first, in some sectors product packaging can be almost as important. This is particularly true for consumer packaged goods such as beverages, toiletries, candies, cosmetics, over-the-counter drugs, etc. If you operate in this sector, you should develop a highly distinctive visual appearance for your product, and protect it with trademark registrations. To get the strongest possible protection for the visual appearance of a product, you should not include any textual elements in the mark.
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