We are accustomed to thinking that the competition between entrepreneurs in the market focuses exclusively on research, creation, and the innovation of new products. However, in a world where everything (or almost everything) has already been invented, it is often the packaging in which these products are presented that attracts consumers.
Product packaging, in fact, in addition to fulfilling the primary function of containment and protection, is often used as a tool for communication, information, and marketing and, as such, should be the subject of appropriate protection.
Packaging can be protected under multiple aspects: the classic protection is that of its external appearance through design forms; however, should this shape also be distinctive, it could be protected through trademark law or unfair competition laws. Furthermore, if it proves to be innovative from a technical standpoint, one could resort to protection via a patent or utility model or, in the presence of a proven artistic gradient, through the forms of copyright (diritto d'autore).
These different forms of protection—designed by the legislator to stand alongside one another without overlapping, having different functions and different durations—can be interconnected to create a veritable "armor" for our packaging: for example, patent protection for technical/innovative elements, trademark protection for distinctive ones, copyright for creative ones, etc. Naturally, this is subject to the presence of the appropriate requirements.
But is it really so necessary to protect packaging?
Our experience says yes.
In fact, while rights for the exclusive exploitation of a shape can be claimed—and here we limit ourselves to trademark and design rights—even through its de facto use on the market, de facto use is a creaky system, for multiple reasons.
It creaks because the existence of a de facto trademark is not presumed but must be proven on a case-by-case basis in court, entailing economic efforts far superior to those that a prudent and preventive registration would have required. And this comes with predictable consequences in the event of recourse to urgent procedural measures.
It creaks because de facto design is protected only against slavish imitations carried out in bad faith.
Furthermore, while on one hand it is reckless to place packaging that meets the requirements onto the market without proper protection, it is equally disadvantageous to protect packaging with an inadequate form of protection. Fast and cheap solutions—even in this field—are not always the best.
What happens if the wrong form of protection is chosen?
The wrong choice of a form of protection could be counterproductive, allowing third parties to copy the invention from a technical point of view while leaving the shape unaffected, or resulting in our packaging falling into the public domain.
If distinctiveness, individual character, and technical innovation are indeed concepts that are abstractly separate from each other, in practice they often intersect, making the distinction difficult for less expert eyes (and sometimes even for more expert ones).
Our solution
The best solution is to carefully evaluate the potential duration of the exploitation of our innovation, its functions, and its characteristics in order to activate the most effective protection tools from the outset. In particular, to avoid undermining the effectiveness of the protection, it can be useful to consult with legal experts in the field.
The professionals at Studio Saglietti Bianco, specialized in the field of trademarks and patents, are at your full disposal for anyone seeking more information or clarification in this regard.