As tempting as it may be, replicating someone else’s packaging too closely can land you in hot water.
Copyright law, the law of misleading or deceptive conduct and passing off laws could in some cases be utilised to prevent the look and feel of a product’s packaging from being copied by someone else. If the packaging of a product is unique and distinctive, without being functional, that too, may be protected as a trade mark.
Patterns, shapes and aspects of packaging
Don’t forget that it is also possible to register colours, patterns, 3-dimensional food shapes and other aspects of packaging as trade marks. Having a trade mark registration over a particular element of packaging means that the trade mark owner can stop others from using it in that same category of goods or services.
For example, the 3D donut shape of Werther's Original butterscotch candy, the shape of Arnott’s Teddy Bear biscuits and various other shape and pattern trade marks have been registered in Australia.
Case study: The Coca-Cola bottle – even a blind man can feel what he holds
It is no surprise that the Coca-Cola bottle is registered as a trade mark as the shape is so distinctive. The Coca-Cola company executive Harrison Jones once stated that it’s so unique even a blind man could tell what he holds.
Reputation can be a sword when stopping a rival product
A significant function of trade marks is to protect reputation. In the area of copycat packaging, the strength of your brand’s reputation can be of great importance when it comes to your ability to stop imitators.
Case study: a Monster battle over energy drink
In 2008, Hansen Beverage Company, a US manufacturer of popular energy drink, MONSTER ENERGY, took legal action against Australian company, Bickfords in regards to its identically-named energy drink (Hansen Beverage Company v Bickfords (Australia) Pty Ltd  FCAFC 181).
Despite having no actual market presence or trade mark registration for its brand in Australia, Hansen alleged that consumers would be misled by similarities between Bickford’s product and its own.
were called Monster Energy;
were sold in ‘super-size’ black cans;
had three different versions of the drink in colour variants (orange, blue and green); and
used similar slogans and graphics positioning.
While there was no dispute that the similarities between the products could mislead or deceive consumers, in order to actually win the case, Hansen had to establish that it had developed a sufficient reputation in Australia to build an argument that people could in fact be misled. In doing so, it relied on the brand’s spill over reputation in Australia due to its connection with extreme sports competitions and strong presence on the internet.
In the first instance, the judge thought that the reputation of Hansen’s Monster Energy drink in Australia had been ‘fleeting’, ‘occasional’ and ‘incidental’. However, when Hansen appealed the decision to a higher court, the judges considered that indirect advertising, even if it originated from overseas, could be sufficient to establish the required reputation, especially due to the global reach of the internet.
As a result of the case, Bickfords changed the name of its energy drink to ‘Insane Energy’ and registered that as a trade mark in Australia.
Notably, had Hansen thought of registering its MONSTER trade mark in Australia early on, it would have been able to enforce its trade mark registration rights against Bickfords to prevent them from using the same name. In this case however, Hansen instead had to go to the trouble and expense of proving that it had a wide enough reputation before Bickfords could be stopped. One lesson from the case then, is to register trade marks early, and not only in the country where you wish to sell the products but also think about the countries where you may want to export to in the near future.
What can be learned from all of this?
Firstly, if you have unique packaging that is not purely functional, ensure that you consider trade mark protection right from the outset so that you can secure a filing date and get in before anyone else.
If you may export products overseas, register your brand as a trade mark in those countries as well.
Further, if someone copies the look and feel of your packaging, take action fast, as waiting too long can mean that it simply becomes generic and not distinctive of your own packaging.
On the flipside, be wary of getting overly inspired by someone else’s packaging on the market as that could be misleading for consumers and could see you in the middle of a trade mark battle.
IMPORTANT DISCLAIMER: This article is of a general nature only and must not be relied upon as a substitute for tailored legal advice to suit your own circumstances.
Sharon Givoni is a Melbourne-based intellectual property lawyer who acts for a number of packaging, food and beverage companies Australia-wide. Contact her at firstname.lastname@example.org