‘Imitation sincerest form of flattery’: preventing piggy-backing off success

Packaging and labelling is hugely influential in the food and beverage market, and manufacturers and distributors spend significant sums on ensuring that their product packaging and labelling is sufficiently distinctive and appealing to consumers to encourage them to buy their products.

There is some truth to Oscar Wilde’s statement that "imitation is the sincerest form of flattery" and, in the food and beverage market, successful brands frequently find their competitors trying to piggy-back off that success by copying elements of their packaging, labelling and branding.

There are two primary ways that a manufacturer or distributor can protect the goodwill they build up or intend to build up in their packaging and labelling. The first of these is by applying for a registered design for the shape of the packaging. Designs protect features of a product that have eye appeal and create a monopoly for designs which are applied to an article, for example the pattern of a particular grip applied to a glove.

The maximum period of protection for a design in New Zealand is 15 years and there are particular technical requirements for an application to be successful, for example that the design be kept confidential prior to application.

A much more common route for protection of distinctive packaging and labelling is by registration of a trademark. The most common forms of trademarks are words, logos and combinations of words and logos. It is possible to register other features of trademark such as colour, shape, smell and taste. What it is important is that the trademark is capable of being represented graphically and is capable of distinguishing the goods and services of one person from those of another.

Colour trademarks are powerful given the ability they have to grant a monopoly to one proprietor in relation to the particular goods or services for which they are registered.

Internationally, there have been some well-known battles between competing global companies, perhaps the best known being the long-standing litigation between Nestle and Cadbury in relation to the colour purple. Cadbury still maintains its trademark for the colour purple, namely Pantone 2685C, in relation to blocks of chocolate in New Zealand, having overcome an initial opposition when it first applied for the trademark.

The most recent example of the battle for colour is over the colour green as used on the cans of the V energy drink. The manufacturers of Mother energy drinks brought proceedings to have the registered trademark for the colour green removed.

Usually disputes around trademarks occur at the time one party applies to register the trademark as there is a three-month window for a party which wishes to object to file an opposition. The green trademark for V had been registered since June 2012, and the manufacturers of the Mother energy drinks were unsuccessful in having it removed, partly due to the fact it had been on the register for so long.

V producer Frucor was also able to establish that it had used the colour green as a trademark in relation to cans of V for a continuous period of three years to support the trademark application.

Had these proceedings been brought when Frucor applied for the trademark, the result could well have been different. This was certainly the case in Australia, where Frucor was unsuccessful in registering the same mark on the basis that it could not show at the time that it applied for the mark that consumers would exclusively associate the V colour green with the energy drink without relying on other elements on the product packaging.

This demonstrates the relatively high bar in obtaining a new registration for a colour as a trademark in most jurisdictions, including New Zealand.

 - Sally Peart is a Partner in Marks & Worth Lawyers and specialises in commercial and intellectual property law.


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