Keeping Up Appearances
Many jurisdictions do not subscribe to trade dress protection, and instead use other intellectual property rights (IPRs) to protect the appearance of products or their parts, as Sarah Morgan discovers.
Germany is a prime example of a jurisdiction without formal trade dress law. It has other protections in place, including at the EU level, for brand owners, and the courts have clarified some of these protections in recent years.
In Germany, trademarks, unregistered Community designs—a unitary industrial design right that covers the EU and is established merely by the disclosure of a design—and copyright can help protect products, according to Holger Gauss, attorney-at-law, Grünecker Patent Attorneys & Attorneys at Law (Germany).
He added that after the Cofemel – Sociedade de Vestuário SA v. G-Star Raw CV decision of the Court of Justice of the European Union (CJEU) in September 2019, German case law “has lowered its standards for affirming copyright protection for so-called ‘works of applied art.’”
In the landmark Cofemel ruling, the CJEU held that the only requirement for a design to qualify for copyright protection in the EU is originality.
Aside from IPRs, product appearances can fall under the supplementary protection of the German Act Against Unfair Competition, but only when the imitated products create an avoidable consumer deception, unreasonably exploit or impair the reputation of the copied goods and services, or when the competitor dishonestly obtained the knowledge or documents needed for such imitations.
Difficulty arises where consumer deception is claimed and the imitations depict a different indication of origin, such as the name/company of the manufacturer.
Mr. Gauss explained: “In such a case, consumer deception is only affirmed if consumers think that the product is a secondary line of a certain product or that there is a license agreement or another business relationship between the brand owner and the imitator.”
“In the past, German courts demanded a certain artistic level to distinguish copyrights from designs.”
Holger Gauss, attorney-at-law, Grünecker Patent Attorneys & Attorneys at Law (Germany)
It is a different situation when the reputation of a well-known product has been exploited. In September 2021, the German Federal Supreme Court (Bundesgerichtshof) confirmed that it is sufficient for a finding of infringement for third parties to be misled into believing that the product is genuine, even if the buyer is not (Ruling I ZR 192/20).
Despite the difficulties that can arise when businesses attempt to take advantage of protection under the unfair competition provisions, Mr. Gauss believes that it is unnecessary to introduce formal trade dress protection in Germany.
He explained that claims can also be enforced with preliminary injunctions, which can be granted within a day or even a few hours. His firm has managed to stop imitations of its clients’ goods on numerous occasions with this approach, he said.
Alternative Approaches
China is another jurisdiction that does not have a specific trade dress law. Wei Xin, co-founder and head of Liuming International (China) and chair of INTA’s Non-Traditional Marks Committee, explained that some trade dress owners rely on design patents or 3D trademarks to protect their trade dress in China.
Ms. Wei called design patent registration in China “fairly straightforward.” The applicant needs to file an application for design patent registration at the China National Intellectual Property Administration (CNIPA).
If the applicant passes the review, CNIPA will issue the notice and the applicant can then apply for the registration certificate.
Once approved for registration, a design patent is valid for 15 years from the application date, and renewal is not allowed.
On the other hand, 3D trademarks are difficult to register, given the detailed criteria required before registration can take place. Indeed, without demonstrable distinctiveness acquired by use in the Chinese marketplace, obtaining 3D trademarks can be challenging.
“3D trademark protection is limited in scope (e.g., product appearance or packaging in 3D images), whereas trade dress is a lot wider than this.”
Wei Xin, co-founder and head of Liuming International (China)
“3D trademark protection is limited in scope (e.g., product appearance or packaging in 3D images), whereas trade dress is a lot wider than this. A 3D trademark must be non-functional and may not give the goods substantive value,” added Ms. Wei.
Although China does not have a specific trade dress law, its Anti-Unfair Competition Law offers a certain degree of protection. The law only applies to “famous” products and services that have a “certain influence” on the market, such as well-known packaging that the public associates with a particular manufacturer. The packaging must also be distinctive.
Since there is no option to register trade dress under this law, businesses must take court action if they want to obtain compensation for the damage caused by unfair competition.
Meanwhile, in Ethiopia, the only possible route to obtain protection is through the separate registration of trademarks, designs, and copyrights, said Abay Feleke, managing partner and customer affairs head at IPELA Consultancy Service PLC (Ethiopia).
Since the existing IP laws of Ethiopia do not give combined protection for products, owners are obliged to file separate applications to obtain protection for their product’s visual appearance or ‘total image’. This includes a product’s features—such as shape, configuration, texture, size, color, graphic design, or packaging, he said.
While the trademark law of Ethiopia clearly stipulates that the visual appearance of the product can be registered as a trademark in the country, these cases are not known as trade dress and parts of a product are not covered under the existing trademark law, he explained.
“Since the existing IP laws of Ethiopia don’t give combined protection for products, owners will be obliged to file separate applications to obtain protection for their product’s visual appearance or ‘total image.’”
Abay Feleke, managing partner and customer affairs head, IPELA Consultancy Service PLC (Ethiopia)
Mr. Feleke added: “Since our law has space to register packaging through trademark law, owners can be protected against copycat products. The main problem is that usually owners have low awareness about registering their packaging through the existing trademark law, and they face difficulties in protecting against infringement.”
It is a similar story in Brazil, where trade dress is not directly contemplated by law. Trade dress is defined as a distinctive sign that may be registered as a trademark under Article 5, item XXIX, of the Brazilian Federal Constitution of 1988.
“But one can enforce trade dress rights through unfair competition, parasite behavior, and copyright claims. Case law, civil procedure rules, and studies confirm this possibility,” said Otávio Padilha, IP attorney at Soerensen Garcia Advogados Associados (Brazil). “In addition, one can seek registration of the main aspects of a trade dress, as a design trademark, for instance, or copyright.”
In recent years, debate has arisen in Brazil about expert evidence requirements in cases of unregistered trade dress imitations. In Special Appeal No. 1353451/MG (Fábrica de Tecidos São João Evangelista v. Companhia Manufatora de Tecidos de Algodão) in 2017, the Superior Court of Justice held that these cases should involve expert opinions to provide evidence of and confirm the practice of unfair competition.
Now, because of the ruling, different requirements exist for expert evidence, depending on whether trade dress is registered as a trademark or invoked based on unregistered rights. When a plaintiff is relying on unregistered rights, expert opinions are required; however, expert evidence is not mandatory when the trade dress is registered as a trademark.
Video courtesy of Envato Elements / azamshah72v
Sunday, May 1, 2022
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