INTA Bulletin

August 1, 2012 Vol. 67 No. 14 Back to Bulletin Main Page

London Event Unwraps Secrets of Trade Dress Protection

On June 29, a group of 120 professionals briefly escaped the rain of a typical London summer by attending a morning seminar on the highly topical issue of the role of get-up, trade dress and packaging in the protection and enforcement of brands. The event, jointly organized by INTA, ECTA (European Communities Trade Mark Association) and ITMA (Institute of Trade Mark Attorneys), drew speakers from the fields of law, psychology and economics. The program covered issues relating to the protection available for features of get-up and trade dress in the United Kingdom and the European Union; considered how features of trade dress, get-up and branding contributed to brand value; and ended with a discussion of the UK government’s consultation on standardized packaging for tobacco products.

Presentations by Nathan Abrams of the UK IPO and Gordon Humphreys of OHIM outlined the types of registered protection available—trademark and design—and reminded the audience of the difficulties in obtaining registered trademark protection for features of get-up such as plain colors and shapes. Next came two discussions on the differing approach of EU member states to look-alikes and the law of unfair competition. Eva Kyriades of Mars Inc. gave an in-house counsel’s view, defining parasitic copying as “a product that closely mimics [the established brand] by combining several features to create a similar overall appearance.” David Latham of Lovells reported on the European Commission’s study into parasitic copying in the EU, and provided some illustrative examples of just how unharmonized the laws are at present.

Next, Jane Leighton of Mountainview Learning, in her lecture on “Psychology of Product Recognition,” highlighted why branding is so important. She explained how consumers are all “cognitive misers,” subconsciously using mental shortcuts, or heuristics, to pick out products from a crowded supermarket shelf. Branding (including trade dress and get-up) helps us identify and choose a product more quickly. Ms. Leighton also introduced the concept of “fluent brands,” where fluency equals speed of recognition. Together with the London law firm Speechly Bircham, Mountainview sought to demonstrate how branding affects our decision making and how look-alikes can have a negative impact on the established brand. The difficult question of how to value brands and quantify damages in look-alike cases was then tackled by Andrew Wynn of FTI Consulting.

The last discussion concerned the issue of the UK government’s ongoing consultation on standardized packaging. Fabio Angelini of De Simone & Partners set out ECTA’s position, the Association’s conclusion being that standardized or plain packaging would not deliver the desired result (fewer people smoking) and could endanger the intellectual property regime that promotes growth within the EU. Max Oker Blom, of the Hanken School of Economics in Finland, offered an economic perspective. He ran through the opposing arguments and advanced two interesting concepts of his own: remove brands from cigarette packaging and all consumers will have to differentiate rival products by price, which may drive prices (and product quality) down; remove the link between the trademark and the product and you will decrease the barrier between branded and counterfeit goods. Neither result can aid in achieving the result desired by proponents of standardized packaging.

The event ended with lunch provided by the host, Charles Russell LLP. Afterward, a few attendees headed outside, reached for a shiny pack of their favorite cigarettes and wondered whether a “No Logo” version would taste the same.

Try INTA’s members-only Trade Dress resources.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2012 International Trademark Association