Package. Find 10 differences

Let’s remind you an unpleasant story about an unprotected and, as a result, an ineffective brand and some lessons that we learnt. Imagine, you decided to register your own mark as a trademark.  So, you are up today and have registered a trademark. It seems you can promote it without any doubts, because you are sure it is the unique trademark in the market… However, neither the market nor competitors stands still, you must not relax. To begin, we want you to pay attention to  one Kazan story.

Above you can see the very similar packages of macaroni. But one of them is made in Chelyabinsk (“Makfa”) and another one is made in Kazan (“Makva”).
The controlling state body paid attention to active sale of the local “MAKVA” at the city stores. As you understand, the similar is very close (here is only the difference of the one letter in the name and in the subject of the device sign), that is why, when a consumer bought macaroni of the local producer (the price was lower than the original one), he was absolutely sure that he bought his favorite brand. Also, we want you to pay attention that the confusion is explained, most of all, by the similarity of the package that can hardly be differed from the distance of the counter. Here we observe the identical similarity of the trademarks and rights of “MAKVA” were violated, as a result.

What would you say about the next example? 

The both logos: “NIVEA” and “LIVIA” are registered trademarks in the name of two completely different companies. I held both bottles and even did not suspect a dirty trick! I am sure that I was not the only one who became a victim of a good imitation. It was caused by the similarity of packages design. The two questions are raised: “Whose fault is it?” and “What to do?”

The industrial design is going to help us.

Theory.
A definition, like the legal regime of the industrial design, as an object of intellectual (industrial) property, is explained in the Patent Law of the Russian Federation. It says: “The art-design decision of the industrial or domestic manufacture product, determining its appearance”. Simply put it into words, this is a design of a product, as a complex of differential (essential) features. This object is provided legal protection, if the decision is new and original. Having filed an application to the Patent Office of the Russian Federation and having successfully passed the examination you get the Patent, that is valid for ten years and you can renew it for five years. Let me remind you that having registered the trademark you get the exclusive rights, the rights to use the trademark by yourself and prohibit others to use it (import, storage, sale proposal, etc.).

The complex of the essential features is the most important part of an application for industrial designs as it evaluates scope of protection that is given by a Patent. The main composition elements, its form and volume, position of composition elements, the graphic design, material, color spectrum, all this can be the essential features almost for every industrial design. In this case with shampoo, we can get a monopoly to use the complex of the following elements: oblong vertical form of blue color with rough lateral; placing in the top part of the logo; upright placed elements of geometric and font graphic, etc. To say it easy, you and we decide important features, measure of rights, for an application. In addition, you can protect the line of variants of the product in the one Patent. Undoubtedly, this is efficient according to the legal and finance sides. Design of different products, article of clothing, furniture, equipment, constructions, etc. can be registered as industrial designs. And, of course, design of a package, including labels. Very often, we are asked a question: “What is better: "a trademark or an industrial design?” Here is our answer: “all depends on a concrete situation.” Summarizing our practice we advise you to protect the industrial design in the following cases:

• If there is an original and expressive design of goods or its package;
• If there are no elements that can be protected as trademarks;
• If there is a line of goods, packages that is united by one conception, but has differences.

The most useful advice is the complex protection, because a name (logo) and design of a package can be your strength that depends on degree of legal protection. We are proud to say that “TORTUGALYA”, the brand of the Republic of Tatarstan and, that is owned by one of our client, “Chelny Khleb” Joint-stock company, is the striking example. Because of the expressive conception the logo and package should be registered and we did it.

by Grigory Busarev
Patent Attorney