The US battle between two Irish dairy firms concluded in the US courts last month, with the owners of Tipperary branded butter emerging victorious.
These images are of trade mark registrations for the products on the US trade mark register. Additional elements are included in the packaging in actual use, which was compared during the case.
The story begins with the owners of Kerrygold, Ornua Foods North America, Inc. and Ornua Co-operative Limited (Ornua) taking an action under several claims, including trade mark and trade dress infringement, against Abbey Specialty Foods LLC (Abbey), who sold Irish butter under the trade mark Tipperary in packaging which Ornua believed to be too close to their own and which they believed would confuse consumers. Abbey requested that the court dismiss the case and rule without a full trial.
In a nutshell, while the New York Court found certain features to be similar, these were considered commonplace in the field, and the overall impression of the product’s packaging differed. Furthermore, Ornua failed to provide evidence of probable or actual confusion, and consequently, their action failed.
In the US, trade dress, i.e., the total image or overall appearance of a product, is protected by specific laws. In the UK and Ireland, however, this is not the case, and brand owners do not have the same specific protections available regarding trade dress.
Therefore, owners must ensure they have procured protection for the “get-up” or unique appearance of their products or packaging through other means, e.g., trade mark and design registration, copyright, and goodwill.
Who can forget the fervour surrounding the fight between Marks and Spencer Plc’s (M&S’s) Colin the Caterpillar and Aldi Store Limited’s (Aldi’s) Cuthbert the Caterpillar? In that case, M&S relied on passing-off, i.e. that goodwill existed in the get-up of the Colin the Caterpillar product, seen in the combination of the shape of the cake, the chocolate shell topped with candies with multi-coloured shells and the shaped white chocolate face and feet, that Cuthbert the Caterpillar’s appearance was too close and that, outside of the packaging, consumers would believe the cakes to originate from the same source and this misrepresentation would result in damage since the Aldi cake was not of the same quality as the M&S cake.
That case was settled out of court, and Cuthbert returned to the shelves, albeit having had a bit of a facelift and with the suffix “the caterpillar” having been dropped. The fact that M&S chose to rely upon passing-off shows that it is a tool that can be utilised with some success when it comes to protecting the appearance of goods.
Earlier this year, a UK Court of Appeal decision was issued in another case between M&S and Aldi concerning whether Aldi’s Christmas gin liqueur bottle infringed design registrations held by M&S for their Christmas gin liqueur bottle.
In this case, M&S relied upon registered designs in the appearance of a light-up gin liqueur bottle with a winter scene silhouette and containing gold flakes. An Intellectual Property Enterprise Court (IPEC) decision that Aldi’s light-up gin liqueur bottles with winter scene silhouettes and edible gold flakes infringed on those designs was upheld.
A Design Registration can protect the appearance of a product or its packaging but, remember, in the UK and Ireland, an application to protect your design must be filed within 12 months of first disclosure; otherwise, your own disclosure will invalidate your design registration. Be warned that in other jurisdictions, it is necessary to apply for design registration before any disclosure is made.
Many well-known companies also look to trade mark registration to protect their get-up. A trade mark isn’t just a name or logo; it is any sign that distinguishes your goods/services from those of others. This may include shapes which are “out of the norm”, e.g. the shape of a Lego building block;
position marks, e.g. the red sole of a Louboutin shoe or the three stripes of Adidas sports clothing;
get-up, e.g. the colours and configuration of a WD40 canister;
patterns, e.g. Christian Dior’s distinctive pattern on apparel and accessories; colour combinations, e.g. the bronze and black of a Duracell battery; etc.
So, while trade dress is not protectable per se in the UK or Ireland, brand owners can take several actions to protect the “get-up” or look of a product or its packaging.
You cannot enforce rights you don’t have, so taking timely action to protect the results of your hard work, creativity and ingenuity is essential. Why not make an appointment with one of our Attorneys to explore what is possible? They would be delighted to offer you guidance in this important area.
Cherrie Stewart, Director and Chartered Trade Mark Attorney