The benefits of protecting the get-up of your product.
The numerous words, devices, slogans and/or logos on the SA Trade Marks Register indicate many brand owners are aware of their right to protect their most basic form of intellectual property, namely the names and logos of their brands. But brand owners, more often than not, neglect to protect the features of their brand or the get-up of a product. This is what their marketing department, marketing agency and employees spend the most time, money and effort to develop and promote, and which members of the public ultimately come to associate with the brand.
The get-up of a product includes its look and feel, and is generally regarded as the form in which brand owners presents their product to the market. Typically this includes the labelling and packaging of a product which consist of a number of features such as colour combinations, graphics and arrangement of design elements. In other words, the get-up of a product is the whole “dress” or decor in which the goods are offered to the public. For example, the decor of the Coca Cola® line of products, namely the distinctive form of the words and logo, and the colour red used in combination with the colour white constitute the get-up of the product.
The definition of a mark and trade mark is wide enough to include the get-up of a product. Brand owners typically apply to register their get-up in the form of a nude label. A nude label generally consists of the packaging of a product where the trade marks, logos and slogans have been removed and replaced with blank spaces. Bear in mind that in order to be registrable, a nude label must comply with the criteria stipulated in section 9 of the Trade Marks Act.
According to legal authorities in South Africa, to enforce trade mark rights in the get-up of a product, the brand owner must be able to show that consumers associate the get-up of a product with the brand owner due to its extensive use of that get-up. From an enforcement point of view it’s advisable for a brand owner to register the get-up of its product if it is inherently distinctive or has acquired distinctiveness by virtue of the brand owner’s extensive use of that get-up. For example, in National Brands Ltd v GM Patel Foods CC, National Brands successfully instituted trade mark infringement and passing-off proceedings against GM Patel Foods based not only on its registration of the get-up of the Tennis biscuit product, but also on its extensive use of the get-up of the Tennis biscuit product, dating back to 1911.
Even though it’s possible for brand owners to protect and enforce their rights in and to the get-up of their products through other forms of intellectual property protection such as copyright, unlawful competition, passing-off and proceedings before the Advertising Standards Authority of South Africa, a trade mark registration for the get-up of a product in the form of a nude label places a brand owner in the best possible position in the event of litigation.
Not only does a registered trade mark provide a presumption of the validity of a registration and that the infringer had notice of the brand owner’s rights, it also gives way to the problem often encountered in, for example, passing-off proceedings where it has been found that even if the get-up of the respective products is similar, the product names are sufficiently different to distinguish them and in effect exclude the likelihood of confusion among consumers.
On the other hand, if trade mark infringement proceedings are instituted based on a trade mark registration for the get-up of a product, the names of the respective products should theoretically not feature and should in effect be excluded from consideration as being an extraneous matter. In essence, in order to determine if consumer confusion is likely, consideration should only be given to the trade mark registration for the get-up and the get-up of the infringer’s product. The owner of a nude label could therefore potentially prevent third parties from using a get-up similar to the registration for the get-up, even if the names of the respective products are different.
There are numerous benefits associated with protecting the get-up of your product as evidenced by case law locally and abroad.
*Alicia van der Walt (née Castleman) is a partner at Adams & Adams and specialises in trade mark prosecution.